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http://www.archive.org/details/briefinquiryintoOOhowsiala 


A  BEIEF  INQUIRY 


INTO     THE 


PRINCIPLES,  EFFECT,  AND  PRESENT  STATE 


AMERICAN 

PATENT  SYSTEM 


BY 


H.  &  C.  HOWSON. 


TOGETHER     WITH     THE 


Laws  of  the  United  States  Relating  to  Patents, 
Trade-Marks  and  Copyrights. 


PHILADELPHIA: 
SHERAIAX  &   CO.,  PRINTERS. 

1872. 


Entered  according  to  Act  of  Congress,  in  the  ye^r  1871, 

By  H.  &  C.  HOWSON, 

In  the  Office  of  the  Librarian  of  Congress  at  Washington,  D.  C. 


CONTENTS. 


Preface,       .......... 

History  of  property  in  inventions,       ..... 

Qeneral  principles  governing  patent  property,     . 

Patents  as  a  mode  of  remunerating  inventors, 

Essential  features  of  a  good  patent  system, 

The  American  patent  system. — Previous  oflBcial  examination. 

Ordinary  criticisms  of  the  Patent  OflSce  considered. 

Actual  defects  of  the  Patent  OfiBce  and  the  remedy,    . 

Benefits  of  an  examining  system. 

The  examining  system  as  viewed  from  abroad, 

Remedies  for  defective  patents,  . 

Disclaimers — Reissues, 

Qeneral  features  of  the  U.  S.  Patent  Laws, 

Caveats,        ..... 

Conditions  to  patentability, 

Interferences,       .... 

Priority  of  invention,  . 

Diligence,    .... 

Appeals, 

Remedies  for  Infringement, 


PAGB 

3 
5 
9 
12 
16 
17 
24 
28 
34 
37 
46 
50 
66 
67 
58 
61 
65 

fi? 
68 
69 


Laws  of  the  United  States    relating   to    patents,  trade    marks 

and  copyrights,    .........         73 

Index  to  patent  laws, 109 


PREFACE. 


The  following  brief  essay  on  the  Patent  System  of  the  United  States 
contains  information  which  the  writers  beUeve  has  not  heretofore  been 
collected  in  a  treatise  of  reasonable  compass.  To  obtain  such  information 
inventors  have  been  compelled  to  resort  for  some  items  to  the  Patent 
Laws,  for  others  to  the  Rules  and  Eegulations  of  the  Patent  Office  ;  while 
others  of  great  importance  have  been,  to  all  practical  intents,  locked  up 
in  elaborate  volumes  to  which  none  but  a  professional  man  could  be  ex- 
pected to  give  the  requisite  time  and  attention. 

The  aim  in  the  following  pages  has  been,  in  part,  to  collect  and  con- 
dense information  concerning  the  general  features  of  the  law,  illustrating 
it,  where  necessary,  by  reference  to  general  principles. 

In  domg  this  it  has  been  pertinent  to  enter  at  some  length  into  those 
questions  of  public  justice  and  policy  upon  which  property  in  invention 
is  founded,  and  to  explain  the  true  position  of  inventors  in  relation  to  the 
pubhc. 

Official  examination,  previous  to  the  grant  of  patents,  has  been 
treated  at  some  length,  and  necessarily  in  a  controversial  way,  the  en- 
deavor being  to  meet,  in  a  fair  and  scrutinizing  spirit,  the  usual  objec- 
tions to  the  system,  to  point  out  wherein  it  may  be  really  deficient,  and 
how  capable  of  remedy  these  deficiencies  are. 

We  believe  that  the  question  is  fairly  stated,  and  candidly  considered, 
and  we  trust  that  our  readers  will  conclude  with  us  that  whatever 
may  have  been  the  defects  in  the  examining  system,  they  are  suscep- 
tible of  remedy,  and  that  all  defects  admitted,  the  system  may  yet  be 
regarded  as  one  of  the  most  efficient  of  those  causes  which  have  given 
patent  property,  here,  a  certainty  and  commercial  value,  such  as  it  pos- 
sesses in  no  other  patent-granting  country. 

It  is  proper  to  state  that  our  remarks  upon  the  main  defect,  want  of 
uniformity,  in  the  examining  system,  and  our  suggestions  as  to  the 

(3) 


PREFACE. 


remedy  are  for  the  most  part  based  upon  observations  made  by  the  Hon. 
M.  D.  Leggett,  the  present  able  Commissioner  of  Patents,  who,  while 
keenly  alive  to  the  defect  alluded  to,  is  not  in  the  least  doubtful  of  the 
feasibility  of  measures  by  which  it  may  be  remedied. 

To  the  facts  and  arguments  adduced  in  support  of  the  examining 
system  additional  point  is  given,  by  reference  to  foreign  testimony  as  to 
the  evils  arising  from  the  grant  of  patents  without  previous  examina- 
tion. It  was  considered  pertinent  to  do  this,  because,  recently,  it  has 
been  hinted  in  sundry  quarters  that  the  abandonment  of  previous  exam- 
inations would  be  a  desirable  improvement  in  our  law.  That  such  a 
change  would  be  anything  but  desirable  we  think  our  readers  can  hardly 
fe,il  to  conclude,  when  they  peruse  the  weighty  evidence  collected  in 
these  pages  against  a  haphazard,  undiscriminating  grant  of  patents. 

The  concluding  chapters  of  the  treatise  touch  upon  other  leading  fea- 
tures in  our  patent  law.  Disclaimers,  reissues,  caveats,  interferences, 
suits  for  infringement,  &c.,  are  treated  of,  necessarily,  with  great  brevity, 
but  not  too  briefly,  it  is  hoped,  to  convey  that  rudimentary  knowledge  of 
the  subject  which  every  person  interested  in  patent  property  should 
acquire. 

Anything  like  the  thoroughness  of  a  legal  text-book  is,  of  course,  not 
to  be  expected  within  so  brief  a  compass,  and  in  fact  anything  beyond 
generalization  has  been  carefully  avoided,  the  object  being  simply  to 
map  out  those  common  principles  and  incidents  which  are  of  everyday 
application  in  dealing  with  properl}'  in  original  invention. 

In  the  book  is  incorporated  the  text  of  the  law  concerning  patents, 
trade-marks,  and  copyrights ;  those  sections  of  the  law  bearing  upon 
questions  treated  in  the  body  of  the  book  being  there  referred  to  by 
number. 

It  is  hoped  that  inventors  and  patentees  will  find  the  treatise  a  ser- 
viceable manual  of  information  touching  matters  greatly  concerning 
their  interests. 

H.  &  C.  HOWSON. 


THE  AMERICAN  PATENT  SYSTEM. 


CHAPTER  I. 

HISTORY    OF    PROPERTY    IN 
INVENTIONS. 

An  inquiry  as  to  the  principles 
and  object  of  the  American  Patent 
System,  may  perhaps  be  made  more 
clear  if  introduced  by  a  brief  his- 
torical retrospect. 

The  English  "Statute  of  Mo- 
nopolies," James  I,  21st,  is  the 
earliest  legislative  recognition  of  the 
public  policy  of  allowing  temporary 
exclusive  rights  in  the  exercise  of  neu' 
ipanufactures.  This  statute  declared 
utterly  illegal  and  void,  those  royal 
grants  for  the  sole  buying,  selling, 
working  or  using  of  different  things 
within  the  realm,  which,  under  the 
name  of  patents,  had  become  odious 
from  their  mischievous  and  oppres- 
sive results.  But  from  the  general 
condemnation  of  monopolies,  the 
act  excepted,  under  certain  qualifica- 
tions, patents  for  the  sole  working 
or  making,  during  a  limited  i^eriod, 
of  any  manner  of  NEW  manufac- 
tures, which  others,  at  the  time  of 
•making  such  letters-patent  should  not 
•use. 

To  the  Anglo-Saxon  mind — jeal- 
ous of  anything  tending  to  re- 
strain free  action,  and  jealous,  es- 


pecially, of  any  extraordinary  in- 
struments of  taxation — monopohes 
in  trade  or  art,  or  in  the  making 
or  vending  of  necessary  or  useful 
articles,  were  utterly  abhorrent. 

But  the  declaratory  character  of 
this  statute  shows  that  previously, 
at  common  law,  it  was  recognized 
as  a  lawful  prerogative  of  the  Crown 
to  grant  to  the  inventors  of  new 
manufactures  the  sole  right,  for  lim- 
ited periods,  of  working  such  manu- 
factures within  the  kingdom,  and 
records  of  such  grants  are  to  be  found, 
dating  so  far  back  as  the  time  of  Ed- 
ward III. 

As  explained  by  Lord  Eldon,  this 
was  a  prerogative  vested  in  the 
Crown  as  the  depositary  of  the  su- 
preme executive  power  of  the  state, 
to  be  exercised  in  behalf  of  and  for 
the  benefit  of  the  public. 

But,  as  may  be  well  understood,  a 
royal  prerogative  of  granting  Pat- 
ents of  Monopolies,  so  long  as  its 
trite  object  remained  undefined  and 
its  exercise  unregulated  by  express 
legislation,  was  exceedingly  likely  to 
be  diverted  from  its  legitimate  uses 
and  employed  for  the  private  advan- 
tage of  the  monarch,  or  of  royal  favor- 
ites, to  the  grievous  disadvantage  of 
'  the  public.  And  so  events  proved,  for 

(5) 


History  of  Property  in  Inventions 


during  the  reign  of  Elizabeth  especi- 
ally the  prerogative  was  so  stretched 
and  perverted  as  to  produce  general 
mischief  and  complaint,  whichfinally 
led  to  the  passage  of  this  Statute  of 
Monopolies,  the  effect  of  which  is  to 
define  the  real  extent  and  object  of 
the  royal  prerogative  with  reference 
to  the  grant  of  patents  affecting  the 
exercise  of  trades. 

It  is  not  our  purpose  to  pursue 
this  historical  inquiry  further  than 
to  point  out  that  the  common  law 
of  England  early  recognized  the 
public  policy  of  granting  exclusive 
privileges  in  the  exercise  of  new 
trades,  and  that  the  jju&Zic  advantage 
arising  from  the  introduction  or  dis- 
covery of  a  new  art  or  trade  was  re- 
garded as  being  tliat  which  alone 
warranted  such  grants. 

The  words  "true  and  first  in- 
ventor," as  used  to  this  day  in  Eng- 
Ush  Patent  law,  include  not  only 
him  who  may  first  devise  or  discover 
something  new,  but  him  also  who 
may  first  make  known  within  the 
kingdom  something  which  has  been 
invented  abroad. 

The  reason  of  this  is  readily  un- 
derstood when  we  consider  the  char- 
acter of  the  times  in  which  the  Eng- 
lish law  on  this  subject  may  first  be 
traced.  The  insular  position  of 
England  and  the  imperfect,  not  to 
say  dangerous  character  of  travel, 
isolated  her  from  the  rest  of  the 
civilized  world.  Communication 
was  limited  and  infrequent,  and  in 
every  country  patriotism  took  the 
shape  of  extreme  jealousy  of  for- 


eigners. It  is  not  hard  to  believe, 
then,  that  to  import  knowledge  of 
an  art  from  abroad  was  no  small 
achievement,  but  might  be  regarded 
as  rare  merit. 

Thus  in  the  Clothmakers  of  Ips- 
wich case,  adjudged  in  the  reign 
of  James  I,  it  is  said,  "If  a  man 
hath  brought  in  a  new  invention 
and  a  new  trade  within  the  king- 
dom, in  peril  of  his  life  and  consump- 
tion of  his  estate  or  stocky  &c.,  or  if  a 
man  hath  made  a  new  discovery  of 
anything,  in  such  cases  the  King, 
of  his  grace  and  favor,  in  recom- 
pense of  his  cost  and  travail,  may 
grant  by  charter  unto  him  that  he, 
only,  shall  use  such  a  trade  or  traf- 
fique  for  a  certain  time,  &c." 

To  the  development  of  invention 
in  the  sense  of  originating  and  de- 
vising, neither  the  intellectual  nor 
the  social  condition  of  these  early 
times  was  favorable. 

The  mass  of  laborers  and  artisans 
were  Uttle  more  than  human  ma- 
chines, running  in  one  rut,  and  as  a 
rule  lacking  the  desire  or  the  intel- 
ligence to  seek  to  better  their  modes 
and  means  of  working,  while  the  in- 
tellectual efforts  of  those  of  higher 
rank  and  educated  intelligence  were 
not  as  yet  fairly  diverted  from  the 
unprofitable  channels  and  myste- 
rious lore  of  a  false  and  unprofit- 
able philosophy.  Bacon's  works 
were  but  now  startling  the  edu- 
cated few,  and  the  leaven  of  that 
practical  and  humane  philosophy  of 
which  he  was  the  first  great  exponent 
had  jet  to  commence  its  work  on 


History  of  Property  in  Inventions. 


men's  minds.  The  science  of  the 
times  was  perfectly  barren.  The 
artisans  were  not  thinkers,  and  the 
thinkers  had  no  acquaintance  with 
the  practical  arts.  There  was  yet  a 
gulf,  partly  of  social  and  political  and 
partly  of  educational  creation,  sepa- 
rating cultured  intelligence  and 
practical  industry,  which  must  be 
allied  before  there  can  be  fruitful 
invention. 

Kor  were  the  political  troubles  of 
the  time,  succeeded  as  they  shortly 
were  by  internal  war,  favorable  to 
the  development  of  the  industrial 
arts.  Moreover  the  science  of  phys- 
ics was  yet  to  be  reduced  to  rational 
principles,  and  new  modes  of  thought 
to  be  developed,  and  this  was  the 
slow  work  of  years.  The  applica- 
tion of  science  to  the  practical  arts 
must  come  later. 

It  is  not  to  be  wondered  at  then, 
that,  as  is  observed  in  the  excellent 
treatise  of  Hindmarch,  "  for  many 
years  after  the  passing  of  the  statute 
of  monopolies  the  arts  and  manu- 
factures continued  in  a  low  state 
in  England  ;  few  of  the  inventions 
for  which  letters-patent  were  ob- 
tained were  of  any  value,  and  the 
demand  for  novelties  being  very 
limited,  no  one  was  tempted  to  in- 
fringe the  rights  of  patentees." 

It  is  not  until  the  reign  of  George 
III  that  we  find  the  subject  of  prop- 
erty in  inventions  attracting  public 
attention.  Then  the  troubles  of 
Arkwright  and  of  Watt,  brought 
the  subject  of  patents  into  court ,  and 
led  to  the  earliest  of  that  series  of 


judicial  reasonings  upon  the  English 
law  of  patents,  which  gives  that 
law  what  it  has  of  system. 

We  need  not  wonder  that  the 
early  treatment  of  patents  in  the 
English  courts  was  anything  but 
liberal.  The  subject  was  a  strange 
one,  coming  before  them  at  a  time 
when  a  very  clear  and  high  concep- 
tion of  the  importance  and  merit  of 
inventors  could  hardly  exist. 

In  later  years,  as  the  exercise  of 
the  inventive  faculties  became  more 
general  and  active,  and  had  pro- 
duced results  which  forced  a  per- 
ception of  the  importance  and  value 
of  original  invention  upon  the  public 
mind,  a  more  liberal  treatment  of 
patents  crept  into  the  judicial  prac- 
tice ;  and  the  English  patent  law  as 
it  stands  to-day  is  for  the  most  part 
judge-made  law,  whose  doctrines 
are  founded  upon  reasoning  as  just 
and  liberal,  perhaps,  as  the  bounds 
of  the  old  legislation  forming  the 
text  for  the  judicial  commentaries 
will  permit. 


The  apparent  public  poUcy  of  en- 
couraging improvements  in  the  use- 
ful arts,  has  led  to  the  adoption 
by  most  civilized  countries  of  patent 
systems  more  or  less  analogous  to 
that  of  England. 

The  earliest  to  adopt  such  systems 
were  France  and  the  United  States. 

Our  own  patent  system,  first  es- 
tablished by  Act  of  Congress,  in 
1790,  and  gradually  developed  and 
improved  by  subsequent  legisla- 
tion, is  based  upon  reasoning  which 


History  of  Property  in  Inventions. 


8661138,  on  the  whole,  peculiarly  cor- 
rect, just,  and  liberal. 

It  originated  at  a  time  and  under 
circumstances  favorable  to  the  de- 
velopment of  inventive  activity,  and 
which  allowed  a  clear  perception  of 
the  importance  of  invention  to  the 
domestic  progress  of  the  useful  arts 
and  its  consequent  utility  to  society. 

This  led  to  a  recognition  of  the 
principle oi lyrivateright  which  really 
underlies  a  patent  system,  and  of 
the  broad  difference  between  patent 
privileges  and  monopolies,  so  called. 

A  monopoly  in  its  legal  and  odious 
sense,  implies  the  taking  away  of 
some  right  from  the  many,  for  the 
benefit  of  particular  individuals. 
Manifestly,  then,  the  term  is  not 
applicable  to  letters-patent  for  new 
inventions ;  that  cannot  be  taken 
from  the  public,  which  the  public 
has  not ;  a  new  invention  or  discov- 
ery can  become  public  property, 
only  by  communication  from  the 
inventor  or  discoverer ;  until  so  com- 
municated voluntarily,  it  >  remains 
the  secret  property  of  the  latter. 

This  view  of  the  case  shows  that 
into  the  public  policy  of  patents 
enter  important  considerations  of 
public  justice,  an  idea  upon  which 
we  shall  have  occasion  to  dwell  more 
fully  in  the  course  of  this  treatise. 

Looking  to  the  question  how  far 
our  patent  system  may  be  adjudged 
from  experience  to  have  proved  con- 
sistent with  the  principles  of  justice 
and  policy  upon  which  it  is  based, 
we  find,  to  begin  with,  that  the 
number  of  patents  issued  in  this 


country,  is  very  largely  in  excess  of 
that  in  any  other  patent-granting 
country  ;  that  there  is  here  a  more 
general  and  widely-spread  inventive 
activity  than  elsewhere  ;  that  Amer- 
ican labor-saving  machinery  and 
devices  are  in  demand  the  world 
over  ;  and  that  inventors  enjoy  in 
this  community,  a  power  and  con- 
sideration without  parallel  abroad. 

The  vast  amount  of  work  to  l)e 
done  in  developing  the  resources 
and  industries  of  this  new  coun- 
try, by  a  comparatively  small  and 
scattered  population,  with  moderate 
pecuniary  resources,  has  made  labor- 
saving  mechanism  a  peculiarly  ser- 
viceable instrument  of  power,  sup- 
plying the  place  of  manual  lalwr 
with  greater  accuracy  and  economy, 
and  so  increasing  the  productive 
power  of  capital. 

Thus,  it  is  because  of  its  pecu- 
liarly manifest  utility  to  the  public, 
that  invention  has  here  attained 
such  dignity. 

How  far  has  this  been  brought 
about  by  our  patent  system  ?  or  in 
other  words,  how  far  has  that  sys- 
tem tended  to  incite  and  foster  the 
exercise  of  ingenuity  . 

Our  Patent  Laws  are,  undoubted- 
ly, the  most  truly  liberal  of  any. 
They  more  clearly  than  any  other 
recognize  the  truths  that  productive 
industry  is  the  basis  of  national 
wealth  and  power ;  that  such  indus- 
try will  flourish  in  proportion  as 
it  is  made  a  secure  source  of  indi- 
vidual profit ;  that  true  invention  is 
intellectual  production  of  the  most 


General  Principles  Governing  Property  in  Inventions. 


beneficial  kind,  and  that,  therefore, 
true  policy,  which  is  always  just, 
demands  that  it  shall  be  made,  as 
far  as  posssible,  a  secure  source  of 
individual  profit. 

The  benefit  of  the  patent  laws  has 
been  sought  with  avidity,  and  there 
can  be  no  doubt  that  the  advantages 
which  they  hold  out  have  led  to  a 
multitude  of  inventions  and  novel 
disclosures,  which  otherwise  had  not 
been  made. 

But  many  Complaints  and  criti- 
cisms have  been  directed  against 
the  patent  laws  and  their  adminis- 
tration (some  of  them  more  or  less 
just,  no  doubt,  since  an  absolutely 
perfect  system  of  human  designing 
is  hardly  to  be  looked  for),  but  for 
the  most  part  we  think  fallacious 
and  arising  from  a  misapprehension 
of  the  true  principles  of  the  law. 

This  misapprehension,  it  is  be- 
lieved, is  to  be  traced  in  great  de- 
gree to  the  just  favor  and  consider- 
ation with  which  inventors  have 
been  regarded,  leading  gradually  to 
a  somewhat  one-sided  and  partial 
understanding  of  the  laws  affecting 
them. 

CHAPTER  II. 

GENERAL     PRINCIPLES     GOVERN- 
ING PROPERTY  IN  INVENTIONS. 

It  is  our  purpose  in  this  chapter 
to  inquire  first  into  the  true  nature 
and  purpose  of  patent  laws,  for  it  is 
necessary  to-  ascertain  this,  before 
we  can  look  with  intelligence  into 
the  question  of  the  justice  and  effi- 
ciency of  our  own  law. 


Tlie  patent  laws,  as  viewed  in 
reference  to  inventors  only,  are  the 
means  of  securing  temporary  exclu- 
sive rights  to  the  use  of  new  and 
useful  inventions,  and  it  is  not  un- 
natural that  inventors  themselves 
should  regard  the  laws  in  that  Ught 
only.  So  viewing  them,  regarding 
themselves  as  the  only  parties  inter- 
ested, they  will  look  with  impa- 
tience and  disfavor  upon  those  fea- 
tures in  the  laws,  or  the  administra- 
tion of  them,  which  may  seem  mere 
embarrassments  or  impediments  in 
the  way  of  obtaining  patents. 

Yet  this  is  not  a  true,  because 
only  a  partial,  view  of  the  subject. 

It  would  be  an  unprofitable  and 
unnecessary  task  to  touch  upon  the 
question  of  man's  natural  property 
in  his  own  original  ideas.  It  is  suffi- 
cient to  recognize  the  fact  that  as 
long  as  they  are  locked  up  in  his  own 
breast,  they  are  likely  to  be  of  little 
benefit  to  himself  or  any  one  else  ; 
to  be  of  use  they  must,  as  a  rule,  be 
disclosed ;  and  when  once  disclosed, 
they  cannot  be  stamped  with  the 
character  of  individual  property, 
and  be  identified  and  protected  as 
such,  except  through  the  medium 
of  positive  legislation. 

But  society  can  be  looked  to  for 
such  legislation  only  if,  and  so  far 
as  it  may  be,  consistent  with  the 
general  welfare. 

Consequently  it  is  in  utility  to 
society  that  we  must  seek  the  rea- 
son and  justification  of  positive  laws 
recognizing  individual  rights  in  con- 
nection with  invention. 


10        General  Principles  Governing  Property  in  Inventions. 


The  progress  of  the  useful  arts  is 
a  most  important  branch  of  the 
general  welfare,  and  inventors  are 
the  chief  instruments  for  the  ad- 
vancement of  the  useful  arts.  An 
inventor  is  not  bound  to  disclose 
his  invention ;  he  may,  if  he  so 
elect,  keep  the  knowledge  of  it  to 
himself,  but  generally  he  cannot 
himself  profit  by  its  use,  without,  in 
the  very  act,  disclosing  it  to  others, 
and  when  thus  disclosed,  there  is 
nothing  in  the  absence  of  positive 
law  on  the  subject  to  prevent  other 
members  of  the  public  from  avail- 
ing themselves  of  an  idea,  which 
has  then  in  a  certain  sense  become 
public  property. 

Evidently,  in  a  state  of  society 
where  for  an  inventor  to  disclose  his 
invention  is  altogether  to  lose,  with- 
out return,  the  special  benefit  of 
it,  and  of  the  labor  and  expense  he 
may  have  bestowed  upon  it,  there 
is  little  or  no  encouragement  for  the 
exercise  of  ingenuity,  and  the  ex- 
penditure of  thought,  time,  labor, 
and  money  in  the  bringing  to  light  of 
new  inventions.  Men  will  not  wil- 
Ungly  sow  merely  for  others  to  reap. 

It  may  be  said  that  the  inventor 
derives  a  profit  from  his  original 
thought,  in  the  advantage  which  it 
gives  him  over  competitors,  by  way 
of  increased  facilities  or  economy  in 
the  prosecution  of  his  business.  But 
if  he  cannot  hope  to  maintain  this 
power  longer  than  he  can  keep  it 
secret,  but  must  upon  accidental 
disclosure  share  his  advantage  with 
all  his  competitors,  so  that  he  wiU 


then  occupy  no  better  position  rel- 
atively than  before,  plainly  the  in- 
ducement to  invention  is  small  in- 
deed. 

It  is  to  lie  considered,  moreover, 
that  in  an  active  condition  of  the 
inventive  mind,  a  vast  number  of 
original  ideas  must  be  produced, 
which  have  no  relation  to  the  par- 
ticular employment  of  the  inven- 
tors, and  for  the  encouragement  of 
such  a  general  active  condition, 
therefore,  some  special  inducement 
must  exist. 

Some  few  inventions  there  are 
which  may  be  practiced  in  secret, 
and  no  doubt  valuable  and  import- 
ant discoveries  liave  in  this  way  died 
with  their  originators,  and  so  been 
lost  to  the  world.  Of  such  conceal- 
ment it  is  desirable  that  there  should 
be  as  little  as  possible,  not  only  be- 
cause it  tends  to  deprive  the  public 
of  useful  knowledge,  but  because  it 
tends  to  destroy  confidence,  and 
arouse  doubt  and  suspicion,  hamper- 
ing business,  and  interfering  with 
peace  and  good  order.  The  conceal- 
ment of  inventions,  where  it  may 
appear  practicable,  will,  ixirhaps, 
always  be  to  some  extent  indulged 
in,  but  it  is  evidently  impolicy  on  the 
part  of  the  public  to  encourafje  such 
concealment,  by  totally  ignoring  the 
interests  of  inventors. 

The  mischiefs,  public  and  private, 
likely  to  proceed  from  compelling 
inventors  to  secrecy,  have  been  thus 
forcibly  represented  by  an  accom- 
plished writer : 

"  A  manufacture  conducted  in  se- 


General  Principles  Governing  Property  in  Inventions.         11 


cret,  is  at  an  enormous  disadvantage. 
Processes  must  be  separated,  that 
the  workman  may  not  apprehend 
the  mystery ;  immense  wages  must 
be  paid  to  retain  them  from  desert- 
ing to  competitors ;  simpUcity  must 
be  avoided,  andexiiense  introduced, 
for  no  purpose  1)ut  to  complicate 
and  confuse  the  methods  used.  Ex- 
periments for  further  improvement 
must  be  avoided,  for  they  would  not 
only  tend  to  disclosure,  but  to  the 
loss  of  the  outlay  incurred  in  estab- 
lishing the  existing  expensive  meth- 
ods. After  all,  if  the  attempt  to 
maintain  the  secret  were  successful, 
the  public  would  be  no  gainers,  for 
it  would  constitute  a  strict  mo- 
nopoly, and,  unlike  a  patent,  a  mo- 
nopoly that  would  be  lasting  either 
till  the  secret  was  discovered,  or 
till  it  died  with  its  first  employers." 

To  this  it  need  only  be  added  that 
in  such  a  state  of  affairs,  many  im- 
portant improvements  would  be  for- 
ever lost,  from  the  inability  of  the  in- 
ventors to  undertake  the  burden  of 
practicing  them  secretly,  and  their 
natural  unwillingness  to  run  the  risks 
of  disclosing  them  to  persons  who 
might  assume  that  burden. 

The  relative  positions  then,  of  the 
public  and  inventors,  and  the  conse- 
quences proceeding  therefrom,  may 
be  thus  summarized : 

I.  The  public  is  vitally  interested 
in  the  progress  of  the  useful  arts, 
and  to  this  progress  the  production 
and  disclosure  of  original  invention 
are  essential :  it  is  the  clearest  imhlic 
policy  to  encourage  such  production 


and     disclosure     by    any    proper 
means. 

II.  Inventors,  in  producing  and 
disclosing  improvements  in  the  use- 
ful arts,  add  materially  to  the  pub- 
lic stock  of  wealth  and  power,  and 
are  therefore  producers  of  the  high- 
est order ;  and  as  payment  is  the 
rightful  consequence  of  physical  or 
mental  labor,  time,  and  capital  ex- 
pended in  production,  it  would  seem 
the  clearest  public  justice  that  some 
mode  should  be  provided  of  remune- 
rating inventors  in  proportion  to  the 
value  of  their  productions  and  dis- 
closures. 

III.  From  the  preceding  proposi- 
tions it  follows  that  the  pubhc  object 
of  promoting  the  progress  of  the 
useful  arts  is  that  which  allies  the 
interests  of  the  public  and  those  of 
inventors.  The  consideration  which 
passes  from  the  inventor  to  the  pub- 
lic, entitling  him  to  some  return, 
is  his  contribution  to  that  progress. 

We  come  then  to  the  conclusions 
that,  practically  speaking,  the  rights 
of  inventors,  as  such,  are  those  cre- 
ated by  positive  legislation ;  and 
that  the  object  of  legislation,  in 
creating  such  rights,  is  to  promote 
the  progress  of  the  useful  arts  by  pro- 
viding some  mode  by  which  inven- 
tors may  be  remunerated  for  their 
instrumentality  in  promoting  that 
progress. 

Thus  we  find  the  true  object  of 
our  own  patent  system  in  the  title 
of  the  original  act  of  1790,  and  of  the 
succeeding  acts:  "An  Act  to  pro- 
mote the  progress  of  the  use  ful  arts. ' ' 


12 


Of  PcUents  as  a  Mode  of  Bemunerating  Inventors. 


CHAPTER  III. 

OF  PATENTS  AS  A  MODE  OF  RB- 
MUNEBATENG  INVENTORS. 

The  propositions  admitted,  that 
it  is  both  poUtic  and  just — having 
regard  to  the  progress  of  the  useful 
arts — to  provide  some  mode  in  which 
inventors  may  derive  personal  profit 
from  their  contributions  to  that 
progress,  the  next  point  to  be  as- 
certained is  the  best  mode. 

That  which  is  the  most  obvious, 
is  the  payment  by  the  state  of  a 
stated  price  or  premium,  but  there 
are  many  and  obvious  objections  to 
this  mode.  It  could  not  be  practi- 
cally carried  out  with  even  justice 
to  the  public  and  to  inventors,  and 
it  would  entail  a  cumbrous  and  ar- 
bitrary system  peculiarly  open  to 
abuse.  It  would  be  necessary  either 
that  the  law  itself  should  ascertain 
and  fix  valuations  for  inventions 
generally — manifestly  an  absurd 
and  impractical  thing,  and  one 
which,  if  attempted,  woujd  work 
injustice,  sometimes  to  the  pubUc, 
and  sometimes  to  inventors, — or  the 
fixing  of  values  must  be  left  to 
tribunals,  whose  decisions  would, 
of  necessity,  be  arbitrary  and  un- 
satisfactory, smce  they  could  not 
apply  to  the  determination  of  the 
question  the  only  reasonable  and 
just  test,  that  of  experience. 

These,  and  other  objections 
equally  obvious,  but  to  which  it  is 
not  to  our  purpose  here  to  allude, 
make  it  plam  that  a  system  of  this 
kind  would  not  well  answer  the  end 


of  promoting  the  progress  of  the 
useful  arts. 

The  objections  which  we  have 
cited,  going  to  show  what  is  not  a 
good  and  efficient  mode,  point  to  the 
principles  necessarily  governing  a 
mode  which  is  so 

It  is  just  and  proper  that  a  new 
and  useful  invention  should  be  paid 
for  by  the  public,  in  proportion  to 
its  proven  value  to  the  public,  and 
that  the  mode  of  valuation  should 
be  the  same  as  in  the  case  of  other 
products  of  individual  skill  and 
labor. 

The  public  verdict,  as  evidenced  in 
demand,  is  the  best  general  test  of 
the  value  of  an  article,  and  the  profit 
derived  from  manufacture  and  sale, 
if  these  be  carried  on  with  proper 
enterprise  and  discretion,  will  be  in 
proportion  to  the  value. 

This  is  the  philosophy  of  that 
mode  of  paying  inventors  which  is 
known  as  the  patent  system ;  a 
mode  the  most  just  and  reasonable 
that  could  be  devised. 

Letters-patent  grant  to  the  'in- 
ventor of  a  new  and  useful  improve- 
ment the  exclusive  right,  for  a 
stated  period,  of  making,  using,  and 
selling  such  improvement 

If  an  invention  thus  secured  for  a 
time  by  patent  be  really  valuable 
and  important,  it  is  of  course  desi- 
rable that  it  should  be  brought  into 
public  use  as  s^jeedily  and  widely 
as  possible,  and  here  the  interests 
of  the  pubMc,  and  those  of  the  in- 
ventor are  alike,  for  the  advantage 
which  the  latter  can  derive  from 


Of  Patents  as  a  Mode  of  Remunerating  Inventors.  13 


his  patent,  must  altogether  depend 
upon  his  diligence  and  discretion  in 
availing  himself  of  the  exclusive 
right  which  it  gives  him.  If,  on  the 
other  hand,  the  invention  be  of  no 
value  and  importance,  the  exclusive 
right  of  the  inventor  is  altogether 
harmless ;  it  will  be  practically  no 
restraint  upon  the  public,  and  will 
bring  the  inventor  no  more  than 
he  is  entitled  to. 

Patents — in  so  far  as  they  operate 
as  a  restraint  upon  the  public — are 
yet  decidedly  beneficial  restraints, 
for  during  the  term  of  the  inventor's 
exclusive  right,  the  public  are  bene- 
fited in  the  o'pen  practice  by  the  in- 
ventor himself,  or  those  acquiring 
the  right  from  him,  of  an  invention, 
which,  but  for  the  prospect  of  that 
right,  might  not  have  been  made, 
or  having  been  made,  might  not  have 
been  disclosed.  So  far  as  the  exclu- 
sive right  operates  as  a  tax  upon  the 
public,  it  is  a  tax  justly  proportion- 
ate to  the  ascertained  value  of  the 
consideration  given  by  the  inventor ; 
and  after  the  exclusive  right  has 
expired,  the  public  freely  use  the 
invention  themselves,  being  enabled 
to  do  so  by  the  knowledge  which 
the  inventor  has  imparted  to  them. 
These  then  are  the  principle  and  the 
object  of  a  patent  system  :  to  pro- 
mote the  progress  of  the  useful  arts 
by  extending  to  inventors  that  en- 
couragement to  exert  their  inge- 
nuity, and  disclose  their  inventions, 
which  can  be  given  with  most  ad- 
vantage, both  to  the  inventor  and 
the  community,  in  the  shape  of  a 


temporary  exclusive  right  to  the 
former  to  make,  use,  and  vend  his 
invention. 

Thus  viewed,  the  patent  laws  as- 
sume the  aspect  of  a  compact  be- 
tween inventors  and  the  public,  by 
which  the  public  in  consideration  of 
the  disclosure  by  the  inventor  of  an 
original  thought  which  it  is  not 
compulsory  upon  him  to  disclose, 
yet  of  which,  without  such  disclo- 
sure, neither  he  nor  they  can  have 
the  use  and  enjoyment,  undertake 
to  secure  to  him  for  a  limited  period, 
by  positive  grant,  that  exclusive 
right  in  his  invention,  which  with- 
out such  positive  grant,  it  would  be 
impossible  for  him  to  maintain. 

The  policy  of  patents  as  a  means 
of  promoting  the  progress  of  the 
useful  arts,  has  been  disputed,  never 
seriously,  however,  in  this  country. 
In  England  the  proposition  has  been 
made,  and  urged  more  loudly  than 
forcibly,  to  abolish  patents ;  but 
there  the  would-be  abolitionists  are 
a  very  small  minority,  and  their 
views  have  been  vigorously  and  suc- 
cessfully combated  by  some  of  the 
leading  intellects  of  the  country. 

Holland  stands  alone  as  the  coun- 
try which  has  abolished  patents. 
The  abolition  occurred  in  1869,  the 
royal  proclamation  stating  that  "  the 
grants  of  exclusive  rights  for  inven- 
tions and  improvements  or  importa- 
tions of  objects  of  art  and  industry 
promote  neither  industry  nor  public 
interest." 

In  its  experience  on  this  subject, 
Holland  seems  to  be  as  exceptional 


14  Of  Patents  as  a  Mode  of  Remunerating  Inventors. 


a  country  as  it  is  in  everything  else. 
"Such  a  land  as  Holland,"  says  a 
recent  American  ■writer,  "exists 
nowhere  else.  It  is  not  merely  the 
^most  singular  of  kingdoms,  it  is  the 
only  one  of  its  kind.  You  may  travel 
the  world  over  and  yet  be  unable  to 
form  any  conception  of  the  Nether- 
lands. You  may  live  there  your  life 
long,  and  form  no  adequate  idea  of 
the  remainder  of  the  globe." 

It  is  not  at  all  unlikely  that  among 
a  people  so  conservative  and  self- 
satisfied  as  the  Hollanders,  patent 
laws  did  not  promote  industry.  The 
people,  though  robust,  brave,  and 
industrious,  appear  to  have  a  horror 
of  innovation,  as  is  attested  by  their 
obstinate  adherence  to  sleighs  in 
place  of  wheeled  vehicles,  for  draw- 
ing heavy  loads  over  rough  pave- 
ments. Little  progress  in  the  useful 
arts  is  to  be  expected  in  a  country 
where  men  and  hoi-ses  continue  to 
be  shod  with  wood,  and  where  men, 
women,  and  children  are  still  to  be 
found  yoked  to  the  same  tow  roj^es 
with  dogs  and  donkeys  on  the  banks 
of  the  interminable  canals. 

It  may  be  very  true  that  the  Dutch 
patent  law  did  not  promote  the  pro- 
gress of  the  useful  arts  in  Holland ; 
great  progress  would  scarcely  be  ex- 
pected among  a  people  so  obstinately 
conservative,  no  matter  what  in- 
centives were  offered ;  but  the  Dutch 
law  was  so  intensely  selfish  in  its 
character  that  it  would  scarcely  l)e 
expected  to  promote  any  public  ad- 
vancement in  the  arts,  one  of  its 
prominent  clauses  1>eing  to  the  effect 


that  a  native  forfeited  his  patent  if 
he  secured  his  invention  in  any  other 
country.* 

The  patent  abolitionists  were  un- 
fortunate in  pointing  to  the  example 
of  Holland,  a  country  where  the 
limited  manufacturing  interests  are 
at  a  standstill,  if  not  retrograding, 
and  where  the  prominent  products . 
are  gin,  tulips,  and  cheese. 

Switzerland,  a  country  which 
never  possessed  any  patent  laws,  is 
also  pointed  to  by  the  advocates  for 
the  abolishment  of  patents.  In  re- 
spect to  Switzerland,  Mr.  Day,  in 
his  able  papers  read  before  the  Philo- 
sophical Society  of  Glasgow,  papers 
from  which  we  shall  have  to  quote 
hereafter,  says  :  "  When  do  we  hear 
of  an  important  invention  coming 
to  maturity  in  this  country  ?  There 
is  plenty  of  inventive  talent  in 
Switzerland,  but  Swiss  inventors 
lack  the  stimulus  of  a  patent  law, 
and,  therefore,  have  to  come  here  or 
go  elsewhere  where  an  invention  can 
be  patented,  and  is  recognized  by 
the  state  as  bond  fide  property." 

To  again  quote  from  Mr.  Day's 
book:  "The  patent  system  is  the 
only  one  by  which  a  nation  can  secure 
the  maximum  advantage  from  the 
invention,  the  only  one  by  which  in- 
vention is  properly  encouraged,  the 
only  one  by  which  the  real  value  of 

*  A  Dutchlegislator,  in  advocating  the  aboli- 
tion of  patents,  declared  that  it  was  useless  to 
point  to  the  United  States  and  England  in  sup- 
port of  Patent  laws,  because  those  countries 
were  In  a  degenerate  condition,  notbetterthan 
that  of  Holland  at  the  close  of  the  sixteenth 
century. 


Essential  Features  of  a  Good  Patent  System. 


15 


an  invention  can  be  ascertained,  and, 
therefore,  the  only  one  which  can 
secure  not  merely  reward,  but  a  due 
reward,  precisely  its  exact  worth  to 
the  inventor." 

CHAPTER  IV. 

ESSENTIAL  FEATURES  OF  A  GOOD 
PATENT  SYSTEM. 

Assuming  it  to  be  politic  and 
just  to  provide  some  mode  in  which 
the  public  sliall  pay  inventors  for 
their  contributions  to  the  progress 
of  the  useful  arts,  and  that  the  best 
mode  is  by  a  properly  devised  patent 
system,  we  come  next  to  consider 
what  should  be  the  characteristics 
of  such  a  system.  Undoubtedly 
the  soundest  patent  law  is  that 
which  treats  inventors  with  the 
most  Uberality,  on  the  plain  grounds 
that  the  more  liberal  the  law,  the 
more  it  is  likely  to  answer  its  pub- 
lic purpose  of  promoting  the  prog- 
ress of  the  useful  arts,  by  induc- 
ing the  production  and  disclosure 
of  new  inventions. 

But  this  idea  of  liberality  to  in- 
ventors is  not  to  be  carried  so  far, 
as  to  lose  sight  of  the  public  object 
of  the  law,  and  of  the  fact,  that 
having  a  reference  to  that  object, 
inventors  are  simply  the  instru- 
ments and  means.  In  other  words, 
it  is  not  to  be  forgotten  that  the 
utility  of  inventors  to  society  is  the 
consideration  upon  which  the  legal 
rights  peculiar  to  them  as  inventors 
are  based ;  that  they  occupy  pre- 


cisely the  same  footing  as  other  pro- 
ducers to  the  public  stock,  and  that 
society,  in  contracting  to  pay  them, 
has  the  right  to  establish  such  pro- 
visions and  conditions,  as  are  neces- 
sary to  assure  that  in  each  case  the 
effect  of  the  contract  shall  accord 
with  its  object  and  with  the  general 
welfare. 

If  these  principles  were  continu- 
ally and  clearly  borne  in  mind,  we 
should  have  less  of  that  criticism  of 
the  patent  laws,  based  upon  the 
false  assumption,  often  expressed, 
that  their  one  object  is  to  "  pro- 
tect inventors."  That  is  their  end 
so  far  as  concerns,  the  particular 
interests  of  inventors,  but  they 
have  a  superior  and  public  object, 
that  of  promoting  the  progress  of 
the  useful  arts ;  with  reference  to 
this  object,  the  "protection  of  in- 
ventors "  is  simply  the  means. 

The  proper  liberality  of  the  law 
to  inventors  is  based  not  upon 
poetic  sentimentality  but  upon  per- 
fectly utilitarian  grounds  and  princi- 
ples of  practical  justice. 

Of  the  patent  laws,  therefore,  as 
of  any  other  contract,  the  j ustice  is  to 
be  measured  by  the  degree  to  which 
they  appear  to  consult  and  recon- 
cile the  interests  of  all  parties  con- 
cerned, and  to  proceed  upon  the 
truth  that  the  intended  beneficial 
operation  of  the  bargain  must  be 
destroyed  by  any  provisions  tend- 
ing to  antagonize  the  interests  of 
the  respective  parties. 

If  this  test  be  applied  to  our  own 
patent  system,  we  beheve  it  wiU  be 


16 


Essential  Features  of  a  Good  Patent  System. 


found  that  the  provisions  and  con- 
ditions which  seem  to  be  in  the  in- 
terests of  the  public,  are  also  really 
to  the  advantage  of  inventors  ;  that 
the  same  precautionary  measures 
work  to  the  profit  of  both  parties  to 
the  contract. 

But  before  proceeding  to  apply 
the  test,  let  us  see  what  are  the 
leading  principles  which,  having  due 
reference  to  the  object  to  be  attained, 
may  be  considered  as  essential  to 
be  recognized  and  followed  by  any 
sound  patent  law. 

It  is  evident,  to  begin  with,  that 
new  and  useful  inventions  only,  can 
be  the  subject  of  valid  patents ; 
for  if  an  inventor  produce  and  dis- 
close something  which  is  not  new,  or 
something  which  cannot  be  used, 
or  which  it  is  against  the  interest  of 
society  to  allow  to  be  used,  he 
simply  gives  society -that  which  it 
had  before,  or  that  from  which  it 
can  derive  no  benefit :  which  is  to 
give  nothing  ;  so  that  society  owes 
him  nothing.  A  patent,  therefore, 
granted  for  such  an  invention,  would 
be  invaUd  for  want  of  consideration. 

Presuming  the  invention  to  be 
new  and  useful,  it  is  no  less  essen- 
tial to  the  validity  of  the  patent  that 
it  shall  have  been  fully  and  fairly 
disclosed  by  the  inventor ;  other- 
wise his  part  of  the  compact  has  not 
been  carried  out  in  good  faith. 
There  must  be  no  concealment,  no 
deception,  but  the  information  given 
must  be  sufficient  to  guide  those 
skilled  in  the  art  to  a  beneficial  use  of 
the  invention,  so  that  the  public  may 


fully  and  freely  advantage  by  it  after 
the  expiration  of  the  patent. 

In  addition  to  this  it  is  essential 
that  the  inventor  shall  have  clearly 
pointed  out  and  particularized  what 
he  claims  to  be  original  with  him, 
that  the  pubhc,  during  the  existence 
of  the  patent,  may  be  fully  advised 
as  to  the  nature  and  extent  of  the 
exclusive  right  which  it  confers,  and 
as  to  what  it  is  they  are  restrained 
from  making,  using,  or  selling,  save 
with  the  permission  of  the  patentee. 
As  to  this  there  should  be  no  dis- 
simulation, duplicity,  or  dubious- 
ness, but  a  clear  and  candid  state- 
ment of  claim. 

Now  it  is  manifestly  just  both  to 
the  public  and  inventors  to  insure 
as  far  as  possible  that  none  but  mlid 
patents  shall  be  granted ;  that  is  to 
say,  such  as  do  in  truth  bestow  that 
exclusive  right  which  they  pur2x>rf 
to  bestow. 

This  is  just  to  inventors,  because 
the  value  of  patent  property,  as  of 
any  other,  Is  in  proportion  to  its 
ascertained  degree  of  certainty  and 
security;  and  just  to  the  public,  be- 
cause the  issue  of  valid  patents  only 
is  plainly  an  important  element  in 
the  efficiency  and  pubUc  advantage 
of  a  patent  system. 

It  would  seem  then  to  be  the 
important  end  to  which  the  provi- 
sions of  a  patent  law  should  jyri- 
marily  be  directed,  to  confine  the 
issue  of  patents  as  far  as  possible 
to  inventions  new  and  useful,  clearly 
disclosed,  and  distinctly  claimed. 

A  second  object  to  be  realized  to 


American  Patent  System — Previous  Official  Examination.      17 


the  fullest  extent  possible,  consis- 
tently with  the  maintenance  of  the 
first,  is  that  patents  shall  be  easily, 
six^edily,  and  cheaply  attainable,  so 
as  to  be  within  reach  of  rich  and 
poor  alike. 

Here,  too,  the  interests  of  the 
public  and  inventors  are  identical, 
for  the  more  easily  and  cheaply 
valid  patents  can  be  obtained,  the 
greater  will  be  the  number  of  new 
and  useful  inventions  made  and 
disclosed,  and  the  more  rapid  in 
consequence  the  progress  of  the  use- 
ful arts. 

Naturally  enough,  inventors  anx- 
ious to  obtain  their  patents,  and 
inclined  to  look  upon  the  grant  as 
matter  of  natural  right,  are  apt  to 
look  upon  this  second  object  as  the 
most  important.  But  a  little  re- 
flection will  convince  them  that  the 
matter  of  prime  importance  to  them 
is  the  degree  of  confidence  which 
they  can  place  in  the  validity  of 
their  patents,  and  that  a  reasonable 
e'xpense  of  time  and  money  in  ne- 
cessary proceedings  to  ascertain, 
before  a  patent  is  granted,  that  it 
shall  have  the  essentials  to  validity, 
is  beneficial  to  themselves. 

In  this  regard,  too,  the  interests 
of  inventors  and  the  interests  of  the 
public  are  the  same. 

It  is  to  the  advantage  of  both — 
it  is  the  right  of  both — that,  while 
the  issue  of  valid  patents  shall  be  as 
free  as  possible,  the  execution  of  the 
law  shall  j'ct  be  so  regulated  that  the 
smallest  possible  number  of  invalid 
patents  shall  escape  into  existence. 


CHAPTEE  V. 

THE  AMERICAN  PATENT  SYSTEM. 
PREVIOUS  OFFICIAL  EXAMINA- 
TION. 

We  now  come  to  the  considera- 
tion of  the  more  immediate  subject 
of  this  treatise, — the  merits  of  the 
American  patent  system.  And  first, 
as  to  that  examination  into  the 
novelty  and  utility  of  an  invention 
before  granting  a  patent,  which  is 
the  main  distinguishing  feature  of 
the  system.  This  peculiarity  is  a 
recognition  of  the  principle  to  which 
we  have  above  referred,  that  the 
first  point  of  importance,  both  to 
the  public  and  to  inventors,  is  to 
provide  for  ascertaining,  before  a 
patent  is  granted,  that  the  invention 
is  new,  useful,  and  clearly  described 
and  claimed. 

But  perhaps  the  intent  and  effect  of 
this  previous  examination  can  best 
be  understood  by  comparison  with 
foreign  systems,  of  which  it  forms  no 
part ;  that  of  England,  for  example. 

In  England  patents  are,  to  all 
practical  Intents  and  purposes, 
granted  for  the  asking,  without  in- 
quiry as  to  whether  the  inventions 
sought  to  be  patented  are  either  new 
or  useful,  or  sufl[iciently  described. 

The  time  and  mode  for  determin- 
ing these  questions  are  after  the 
grant  of  the  patent,  through  the 
medium  of  court  or  jury. 

It  is  plain,  therefore,  that  an 
English  patent  carries  with  it  no  pre- 
sumption of  validity,  unless,  having 
undergone  thorough  scrutiny  in  thj 


2 


18 


Previous  Official  Examination. 


course  of  litigation,  it  has  been  in- 
dorsed by  court  or  jurj\ 

Of  what  satisfaction  and  value  to 
the  inventor,  it  may  be  asked,  is  a 
patent  upon  which  he  cannot  place, 
nor  expect  others  to  place,  any  de- 
gree of  confidence,  unless  it  shall 
have  successfully  passed  through  the 
fire  of  litigation. 

Such  a  system  is  a  departure  from 
the  true  principles  of  good  legisla- 
tion, whose  highest  office  it  is  to  cut 
off  sources  of  litigation. 

For  this  end  are  designed  the 
numerous  regulations  which  the 
laws  provide,  touching  the  acquisi- 
tion, holding,  and  transmission  of 
all  kinds  of  property,  with  a  view 
to  ascertain,  define,  and  publish  the 
nature  and  extent  of  individual 
rights,  that  there  may  be  the  least 
possible  occasion  for  those  mis- 
takes, and  that  confusion  or  conflict 
of  claims  from  which  Utigation 
springs. 

And  certainly  patent  property 
should  not  be  excepted  ^om,  but 
should  rather  receive  an  unusual 
degree  of  this  solicitude  of  the  law, 
for  it  is  property  which  the  law  itself 
has  created  for  the  public  benefit, 
and  which,  therefore,  not  only  pub- 
lic policy  but  public  good  faith  re- 
quires should  be  most  carefully  and 
tenderly  guarded  from  the  mischiefs 
of  Utigation. 

The  English  patent  law,  there- 
fore, in  making  Utigation  necessary 
to  raise  any  practical  presumption 
of  the  validity  of  a  patent,  is  cer- 
tainly an  anomalous  law. 


An  EngUsh  patent  which  has  not 
yet  been  successfully  litigated  is 
naturally  an  object  of  doubt  and 
suspicion — a  state  of  affairs  produc- 
tive of  two  classes  of  evils :  First, 
the  very  inferior  value  of  patents  as 
negotiable  property,  an  evil  which 
tliat  large  class  of  inventors  lacking 
capital  wUl  readily  appreciate  ;  and, 
second,  the  constant  and  aggrava- 
ted violation  of  patent  rights  which 
must  ensue  from  the  general  disre- 
gard in  which  those  rights,  from 
their  uncertainty,  are  held. 

It  is  manifest  that  under  such  a 
system  the  field  of  j^atent  projierty 
is  a  mere  scrambling-ground,  with 
all  the  odds  in  favor  of  the  wealthy 
and  the  unscrupulous.  A  jxjor  pat- 
entee will  be  fortunate  indeed  if  he 
is  able  to  make  his  i)atent  a  source 
of  profit  to  himself ;  the  chances  are 
that  he  will  be  driven  to  his  election 
whether  quietly  to  submit  to  the 
wholesale  piracy  of  his  rights,  or 
whether  dearly  to  purchase  the  alli- 
ance of  capital  for  the  maintenance 
of  those  rights  at  the  sacrifice  of  the 
lion's  share  in  them. 

In  this  way  patents,  while  they 
may  serve  to  enrich  the  rich,  are  a 
very  doubtful  blessing  to  the  poor. 
The  pri\ilege  which  such  a  patent 
confers,  is,  substantially,  the  privi- 
lege of  establishing  a  right,  if  one 
can,  by  a  lawsuit,  a  species  of  in- 
vestment in  litigation  in  which  none 
but  a  Utigious  man  can  find  enjoy- 
ment, and  none  but  a  wealthy  man 
can  indulge. 

It  is  true,  that  the  inventor  of  a 


Previous  Official  Examination. 


19 


really  valuable  improvement  may 
lind  some  protection  in  the  enterprise 
of  capitalists  desirous  of  obtaining 
the  benefit  of  it,  but  this  is  an  acci- 
dental and  not  always  desirable  sort 
of  protection. 

It  is,  perhaps,  one  of  the  strongest 
possible  arguments  in  favor  of  a 
patent  system,  that  the  English 
system,  inefficient  and  unjust,  as 
in  many  res^xicts  it  is,  and  very  ex- 
pensive, has  yet  undoubtedly  done 
much  to  foster  the  practical  arts, 
and  is  resorted  to  by  a  large  number 
of  inventors. 


Such  evils  as  we  have  inaicated, 
the  system  of  previous  examination 
adopted  by  our  law  is  intended  to 
obviate  as  far  as  possible.  Abso- 
lutely to  remove  patent  or  any  other 
property  from  the  region  of  doubt 
and  litigation  is  impossible,  and 
however  perfectly  adapted  to  this 
end  the  theory  of  a  law  may  be,  its 
administration  must,  if  only  from 
unavoidable  errors  of  judgment,  fall 
short  of  attaining  a  practical  realiza- 
tion of  that  theory.  We  say  this  be- 
cause of  the  complaints  and  crit- 
icisms which  have  from  time  to  time 
l)een  directed  against  our  law ;  un- 
doubtedly the  majority  have  arisen 
from  particular  instances  of  failure 
or  shortcoming  in  the  administra- 
tion of  the  law. 

It  is  not  our  purpose  here  to  con- 
tend that  the  past  or  present  ad- 
ministration of  the  examining  sys- 
tem was  or  is  perfect,  or  so  nearly 
perfect  as  it  might   be.     It  is  no 


doubt  the  case  that  the  capacity  of 
the  machinery  of  administration 
has  not  kept  pace  with  the  rapidly 
growing  demand  upon  it,  and  time 
and  experience  have  suggested,  and 
will  continue  to  suggest  desirable 
additions  and  modifications  in  de- 
tail. 

But  from  the  complaints,  just  and 
unjust,  made  against  the  adminis- 
tration of  the  examining  system, 
have  been  deduced  arguments  that 
the  system  itself  is  a  failure,  a  posi- 
tive disadvantage  and  should  be 
abolished. 

The  very  doubtful  soundness  of  a 
conclusion  thus  arrived  at  is  pretty 
apparent.  It  is  not  a  fair  conclu- 
sion, unless  it  be  shown  that  the 
defects  of  administration  are  not 
the  accidents  liable  to  arise  in  any 
administration,  but  are  defects  origi- 
nating and  inherent  in,  and  insepa- 
rable from  the  very  nature  of  the 
particixlar  system  administered. 
When  it  is  shown  that  the  best  at- 
tainable means  of  administration 
have  been  tried  and  have  resulted 
in  the  same  faults  and  defects  as 
inferior  means,  then  it  is  allow- 
able to  assume  that  the  system  can- 
not be  administered,  and  should 
be  abolished  ;  but  in  this  case  the 
complaints,  so  far  as  they  are  true, 
are  such  as  indicate  very  possible 
improvements  of  administrutiou. 

Since,  however,  this  subject  of  the 
advantage  or  disadvantage  of  an 
examining  system  is  one  of  great 
importance  and  has  attracted  much 
discussion  pro  and  con,  it  is  worth 


20 


Previous  Official  Examination. 


while  to  look  into  the  complaints 
which  have  been  urged  against  our 
system  to  see  how  far  these  com- 
plaints are  justifiable,  and  entitled 
to  the  great  weight  which  lias  been 
given  to  them. 

It  is  necessary,  first,  to  strip  the 
question  of  a  very  common  fallacy, 
arising  from  an  utter  misunder- 
standing of  the  law,  but  which  is 
often  advanced  as  a  proof  that  the 
system  of  previous  examination  is 
not  effective.  It  is  undoubtedly 
the  fact  that  an  exceedingly  large 
proportion  of  patents  granted  are 
for  trifling  things,  or  for  things 
valueless,  because  inferior  to  pre- 
viously existing  things,  for  the  same 
or  a  similar  purpose.  Kow,  it  is 
asked,  Avhy  does  the  government, 
which  pretends  to  grant  patents 
for  new  and  useful  inventions  only, 
constantly  issue  patents  in  large 
numbers  for  useless  and  trifling  no- 
tions? Such  a  question  is  simpl}-- 
an  entire  misapprehension  of  the 
intent  of  the  law,  and  of  the  mean- 
ing of  the  word  useful  as  employed 
in  the  statute.  The  word  "useful " 
is  not  there  synonymous  with  the 
word  "valuable,"  nor  does  it  indi- 
cate that  an  invention  to  be  pat- 
entable must  appear  to  be  more 
efficient  than,  or  even  equally  effi- 
cient with,  prior  inventions  of  the 
same  class ;  but  it  simply  means 
that  to  be  patentable,  an  invention 
must  be  capable  of  use  for  some  bene- 
ficial purpose,  and  not  inoperative, 
vicious,  or  iounoral.  These  are 
questions    which    can    be    decided 


soundly  and  justly  by  a  comi^etent 
tribunal,  from  the  evidence  afforded 
by  the  application  for  a  patent. 

But  the  value  of  an  invention, 
which  consists  in  its  utility  to  the 
public  at  large,  or  more  immedi- 
ately to  those  concerned  in  that 
branch  of  art  to  which  it  relates, 
can  evidently  be  determined  only 
by  time  and  experience  in  actual 
use  ;  the  only  just  verdict  must 
be  one  rendered  by  the  public  from 
use ;  no  law,  nor  man,  nor  set  of 
men,  can  justly  undertake  to  pre- 
determine the  question,  since  such 
a  decision  must  necessarily-  be  utter- 
ly arbitrary,  and  mere  matter  of 
opinion  based  upon  insufficient  e\i- 
dence. 

This  point  we  have  already  un- 
dertaken to  illustrate,  in  discussing 
the  question  of  the  proper  mode  of 
paying  inventors  for  their  contribu- 
tions to  the  progress  of  the  useful 
arts  ;  and  we  obserred  that  patents 
were  the  fairest  mode,  because  in 
leaving  the  question  of  the  value  of 
each  particular  contribution  open, 
to  be  decided  in  the  onlj-  proper 
way,  they  give  to  the  inventor  the 
opportunity,  by  the  exercise  of  ordi- 
nary diligence  and  discretion,  of 
deriving  a  remuneration  proportion- 
ate to  that  value,  as  thus  most 
soundly  tested  and  determined. 

To  be  sure  there  are  many  cases 
in  which  ordinary  perception  and 
common  sense,  could  without  ap- 
plying the  tests  of  use  and  experi- 
ence, soundly  and  justly  determine 
the  worthlessness  of  an  invention, 


Previous  Official  Examination. 


21 


but  in  all  cases  such  a  mode  of 
decision  would  be  objectionable  as 
arbitrary',  and  in  very  many  cases 
would  be  at  fault  and  unjust. 

It  would  not  be  just  to  inven- 
tors generally,  and  there  must  be 
one  rule  of  justice  for  all,  to  at- 
tempt to  make  this  question  of  value 
a  subject  for  legal  or  official  decision, 
nor  would  it  be  in  any  way  benefi- 
cial to  the  iniblic.  It  is  equally  to 
their  interest  and  to  that  of  inven- 
tors, that  every  new  idea  should  be 
allowed  the  test  of  practical  experi- 
ence. There  is  no  reason  why  in- 
ventors should  not  have  the  same 
opportunity,  as  other  producers,  of 
submitting  their  productions  to  pub- 
lic arbitrament.  Xor  can  patents 
for  valueless  inventions  be  objected 
to  as  working  any  legal  injury  to  the 
public,  for  patents  cannot  practi- 
cally operate  as  a  restraint  or  as  a 
tax  upon  the  public  with  reference 
to  things  which,  being  of  no  advan- 
tage, they  do  not  care  to  use. 

There  is  no  doubt  that  patents 
for  valueless  inventions  have  a  mis- 
chievous effect  ill  leading  to  lament- 
able wastes  of  valuable  time  and 
money;  but  this  palpably  is  some- 
thiug  for  which  the  patent  laws  and 
their  administration  are  in  no  way 
answerable.  The  evil  in  great  mea- 
sure arises  from  the  very  misappre- 
hension of  the  law  which  we  have 
been  discussing,  and  which  causes 
people  to  accept  patents  in  the  way 
of  official  evidence,  which  they  are 
not,  of  the  value  of  the  things  pat- 
ented, and  thus  to  conclude  that 


they  are  valuable,  without  inquiry 
or  even  against  the  evidence  of  their 
own  senses.  This  of  course  is  a 
voluntary  eiTor,  for  which  the  pei*son 
in  error  as  alone  responsible. 

And  for  the  evil,  so  far  as  it  arises 
from  mere  lack  of  discretion,  or 
knowledge  in  individuals  investing 
their  time  and  money  in  patented 
inventions,  to  hold  the  patent  sys- 
tem responsible,  or  to  draw  there- 
from an  argument  against  that  sys- 
tem, is  about  as  reasonable  and  logi- 
cal as  though  a  man,  having  stupidly 
wasted  his  money  upon  a  poor  piece 
of  land,  should  cast  the  blame  upon 
Kature  for  having  placed  the  land  in 
his  way. 

It  is  true  that  our  Patent  Act  au- 
thorizes the  Commissioner  to  issue 
patents  where  he  shall  find  the  in- 
ventions sufficiently  useful  and  im- 
portant, and  this  might  seem  to  give 
the  Commissioner  a  discretion  ca- 
pable of  much  latitude  in  its  exer- 
cise, in  adjudging  as  to  the  patent- 
ability of  inventions.  But  this 
discretion  is  to  be  exercised  in  ac- 
cordance with  the  known  policy  and 
principles  of  the  law— as  judicially 
settled — and  the  inquiry  of  the  Com- 
missioner is  to  proceed  no  further 
than  to  ascertain  that  the  invention 
has  that  negative  sort  of  utility 
which  is  necessary  for  the  support 
of  a  patent  if  granted. 

"By  useful  invention  in  the 
statute  (said  Judge  Story)  is  meant 
such  a  one  as  may  he  applied  to  some 
use ;  beneficial  to  society  in  contra- 
distinction to  an  invention  which  is 


22 


Previous  Official  Examination. 


injuinous  to  the  morals,  the  health, 
or  the  good  order  of  society.  It  is 
not  necessary-  to  establish  that  the 
invention  is  of  such  general  utility 
as  to  sui>ersede  all  other  inventions 
now  in  practice,  to  accomplish  the 
same  purpose.  It  is  sufficient  that 
it  has  no  noxious  or  mischievous 
tendenc}',  that  it  may  be  applied  to 
practical  uses,  and  that  so  far  as  it 
is  applied  it  is  salutarj'.  If  its  prac- 
tical utility  he  very  limited,  it  mill 
follow  that  it  will  be  of  little  or  no 
profit  to  the  inventor;  and  if  it  he 
trifling,  it  vyill  sink  into  uttei'  ne- 
glect. The  law,  however,  does  not 
look  to  the  DEGREE  of  utility ;  it 
simply  requires  that  it  shall  be 
capable  of  use,  and  that  the  use  is 
such  as  sound  morals  and  policy  do 
not  discountenance  or  prohibit." 

The  same  doctrine  is  enunciated 
in  numerous  decisions,  and  points 
clearly  to  the  bounds  of  the  Com- 
missioner's discretion  in  this  matter. 
It  extends  no  further  than  that,  be- 
fore issuing  a  patent,  he  should  sat- 
isfy himself  that  the  invention  has 
utility  as  distinguished  from  utter 
impracticability  or  noxious  ten- 
dency, and  importance  as  distin- 
guished from  absolute  frivolity. 
The  question  of  value  then,  in  its 
ordinary  relative  signification,  the 
patent  laws  very  properly  do  not 
bring  into  consideration  as  in  any 
way  entering  into  the  question  of  an 
inventor's  legal  title  to  a  patent, 
and  it  is  a  fallacy  to  suppose  that 
the  system  of  previous  examination 
is  intended  to  inquire  into  or  deter- 


mine the  point  of  value  as  thus 
understood. 

Curiously  enough  upon  this  same 
fallacy  is  based  a  very  common  ac- 
cusation of  injustice  against  the  ex- 
amining system  and  its  adminis- 
tration. It  is  often  gravely  ol>- 
jected,  and  was  so  but  a  short  time 
since  by  one  of  our  leading  public 
journals,  that  the  power  conferred 
upon  the  officers  of  the  patent  office, 
of  judging  upon  the  value  of  inven- 
tions, is  too  arbitrary  and  danger- 
ous a  power. 

So  it  would  be  if  it  did  but  exist. 
This  objection  in  fact  e\'idences  a 
popular  recognition  of  the  truth 
which  we  have  l)een  endeavoring 
to  illustrate,  that  an  examining 
system  extending  to  the  question 
of  value  could  not  be  justly  ad- 
ministered. To  the  assertion  that 
no  such  power  exists,  it  may  be  re- 
plied that  officers  of  the  patent  office 
have  been  known  to  exercise  such 
a  power.  True  enough,  and  this 
merely  goes  to  show  that  among 
the  numerous  officials  of  the  patent 
office  some  ma}-,  from  time  to  time, 
1)e  found  who,  from  misunderstand- 
ing of  dut}',  exceed  their  powers, 
and  usurp  an  unlawful  jurisdiction. 

That  ordinarily  no  such  power  is 
attempted  to  be  exei'cised  is  best 
proven  by  the  large  number  of  pat- 
ents issued  for  things  of  iudifterent 
value  or  of  no  value  at  all.  This 
fact,  used  as  an  argument  against 
the  efficiency  of  the  examining  S3-S- 
tem  upon  the  hypothesis  that  an 
inquiry  into  A-alue  is  part  of  that 


Previous  Official  Examination. 


23 


system,  exposes  at  once  the  fallacy 
of  that' hypothesis,  and  that  of  the 
allegation  of  injustice  based  upon 
it. 

Eeturning  to  the  fact  that  officers 
of  the  Patent  Office  have  been  known 
to  exceed  their  duty,  by  pronouncing 
judgment  upon  the  value  of  inven- 
tions, this  of  course  is  a  just  ground 
of  complaint,  certainly,  however, 
not  against  the  examining  system, 
in  a  departure  from  whose  princi- 
ples the  wrong  consists. 

If  the  wrong  were  prevalent,  there 
would  be  very  good  ground  for  as- 
sertuig  that  the  administration  of 
the  law  was  not  in  accordance  with 
the  law  ;  but  that  the  wrong  is  not 
prevalent  the  patent  lists  are  con- 
vincing proof. 

Still  another  veiy  common  falla- 
cy is  that  which  holds  the  examin- 
ing system  responsible  for  the  many 
l>atents  of  little  or  no  value,  not 
because  they  refer  to  inventions 
of  little  or  no  value,  but  because 
the  specifications  and  claims  have 
been  defectively  and  insufficiently 
drawn.  This  is  something  for  which 
the  patentees  are  alone  responsi- 
ble ;  it  is  at  once  their  privilege 
and  their  duty  to  specify  what 
it  is  they  claim  to  have  invented. 
The  functions  of  the  officers  of  the 
Patent  Office  are  advisory  no  fur- 
ther than  to  ascertain  before  grant- 
ing a  patent  that  the  alleged  inven- 
tion is  intelligibly  described,  and 
that  the  claim  made  is  certain  and 
distinct.  This  much  they  must  of 
necessity  do  in  undertaking  to  look 


into  the  question  of  novelty  and 
utility.  And  if  the  description  be 
not  sufficiently  clear,  or  more  is 
claimed  than  the  applicant  is  enti- 
tled to,  it  is  their  duty  to  tell  him  so, 
that  he  may  amend  or  modify  his  de- 
scription or  claim  accordingly.  But 
it  is  no  part  of  their  duty  to  volun- 
teer information  that  less  has  been 
stated  or  claimed  than  might  have 
been ;  this  would  be  uniting  the 
functions  of  judge  and  counsel,  and 
assuming  a  duty  which  the  law  very 
properly  leaves  to  the  inventor  him- 
self. It  is  a  fair  presumption  that 
the  inventor  is  a  comjietent  guar- 
dian of  his  own  interests,  so  far  as 
concerns  the  disclosure  of  his  own 
ideas,  and  the  presentation  of  his 
own  claim.  That  he  will  claim  less 
than  he  thinJcs  himself  entitled  to  is 
not  to  be  supposed.  N^or  does  the 
case  differ,  though  the  inventor  him- 
self be  incompetent  to  state  his  in- 
vention and  claim  with  proper  skill, 
for  in  such  case  it  is  incumbent 
upon  him  to  seek  the  counsel  of 
those  who  can  perform  this  duty  for 
him.  The  strict  impartiality  requi- 
site to  the  faithful  performance  of 
the  duties  of  an  officer  of  the  Pat- 
ent Office  must  prohibit  any  such 
officer  from  placing  himself  in  the 
position  of  an  advocate  for  the  in- 
ventor whose  claim  he  is  to  pass 
upon.  It  is  a  common  expression 
that  the  Patent  Office  is  the  guar- 
dian of  the  interests  both  of  inven- 
tors and  the  public  ;  and  this  is  true 
so  far  as  its  meaning  refers  to  the 
exercise  of  careful  and  impartial  dis- 


24  Ordinary  Criticisms  of  the  Patent  Office  Considered. 


crirainatiou  and  judgment  in  pass- 
ing uix)n  claims  of  invention. 

It  is  the  duty  of  the  Office  to  give 
the  patent  asked  for,  if  the  claimant 
api^ears  entitled  to  it,  or  to  give  him 
information  as  to  any  facts  which 
may  appear  to  render  the  claim 
made  inadmissible.  The  rest  may 
well  be  left  to  the  inventor  himself, 
for  he  is  to  be  dealt  with  as  an  in- 
tellujent  man,  capal)lo  of  taking  care 
of  his  own  interests,  and  n^t  as  an 
incomi)etent  under  wardship. 

CHAPTER  VI. 

ORDINAKY      CKITICIS3IS     OF      THE 
PATENT  OFFICE  CONSLDEKED. 

The  observations  in  the  preceding 
chapter  show  that  the  true  crite- 
rion by  which  the  efficiency  and  jus- 
tice of  the  examining  system  is  to  be 
measured,  is  not  the  number  of  pat- 
ents for  things  of  indifferent  or  no 
value,  nor  the  numljer  of  patents 
with  indifferent  claims. 

The  true  question  is,  how  far  has 
the  administration  of  the  examin- 
ing system  been  successful  in  pre- 
venting the  issue  of  patents  for  old 
or  unpatentable  inventions,  or  for 
inventions  previously  patented  ?  and 
how  far  has  its  success  in  this  direc- 
tion been  neutralized  by  accidents 
and  shortcomings  injurious  to  in- 
ventors and  the  public  V 

The  efficiency  of  the  administra- 
tion of  the  Patent  Office,  in  this  re- 
gard, may  be  superficially  illustra- 
ted by  official  figvu:es.    Thus  taking 


the  Commissioner's  report  for  1870, 
we  find  in  that  year  19,171  appUca- 
tions  for  letters-patent  were  made, 
and  it  would  appear  that  an  average 
of  a  little  over  one-fourth  as  many 
were  rejected  for  want  of  patenta- 
bility, chiefly  of  course  for  lack  of 
ivovelty.  Supposing  all  these  rejec- 
tions to  have  been  for  just  and  suffi- 
cient cause,  the  system  in  the  year 
1870  saved  the  public  and  inventors 
from  the  issue  of  nearly  5000  invalid 
patents. 

But  it  is  not  pretended  that  these 
figures  show  the  actual  state  of  the 
case.  We  cite  them  here  as  a  spe- 
cies of  starting-point  and  guide  in 
estimating  the  weight  of  the  various 
jjertinent  criticisms  urged  against 
the  examining  system  and  its  ad- 
ministration. These  criticisms  may 
be  divided  into  three  classes. 

1st.  That  patents  are  granted  for 
old  things,  or  for  things  previously 
patented  to  others,  or  ioi  unpatent- 
able things. 

2d.  That  patents  are  refused  for 
things  which  are  patentable. 

3d.  That  unnecessary  expenses 
and  delays  are  occasioned  in  the 
procuring  of  patents. 

Without  denying  that  there  is 
truth  in  each  and  every  one  of  these 
complaints,  we  propose  to  show  that 
from  the  very  nature  of  things  the 
evils  complained  of  have  been 
greatly  exaggerated  ;  that  so  far  as 
they  have  existed  beyond  tliat  degree 
which  it  would  perhaps  be  impossible 
to  avoid,  they  are  traceable  to  cer- 
tain defects  of  organization  which 


Ordinary  Criticisms  of  the  Patent  Office  Considered.  25 


may  be  cured  ;  and  that  they  have 
been  altogether  overbalanced  by  the 
good  which  the  system,  though  im- 
perfectly administered,  has  never- 
theless worked. 

Coming  first  to  the  charge  that 
despite  the  examining  system,  pat- 
ents are  granted  for  old  things,  or 
things  previously  patented  to  others, 
or  unpatentable. 

In  the  first  place  it  is  well  to  re- 
member, both  in  reference  to  this 
and  to  other  grounds  of  complaint, 
that  they  originate  in  particular  in- 
stances, and  while  such  instances 
are  much  bruited,  from  the  injury 
real  or  fancied  to  individuals,  the 
evidences  of  efficiency  in  the  ad- 
ministration of  the  examining  sys- 
tem, rest  in  official  records  which 
meet  the  eyes  of  comparatively  few. 

The  official  figures  which  we  have 
cited  are  really  evidences  of  gen- 
eral efficiency  of  vastly  more  weight 
than  any  adverse  evidence  to  be 
derived  from  the  isolated  experi- 
ences of  individuals,  yet  the  latter 
are  more  openly  noised,  and  from 
this  reason  alone  receive  a  degree  of 
credit  which  a  moment's  considera- 
tion of  the  other  side  of  the  question 
would  serve  to  take  from  them. 

Xor  should  it  be  forgotten  how  far 
charges  of  this  nature  may  rest  on 
mere  opinion,  and  that,  interested 
opinion.  Take  the  case  of  a  prior 
patentee  and  a  present  applicant  for 
a  patent,  whose  several  inventions 
border  very  closely  upon  each  other, 
all  the  probabilities  are  that  if  the 
opinions  of  the  respective  parties 


were  taken  they  would  prove  dia- 
metrically opposite ;  the  patentee 
would  insist  on  the  identity  or  equiv- 
alency of  the  two  devices,  the  ap- 
plicant would  see  a  clear  difierence 
between  the  two,  and  instance  the 
refusal  of  a  patent  to  him  as  a  piece 
of  rank  injustice  and  stupidity  on 
the  part  of  the  Office.  Each  party 
would  see  and  argue  in  his  own  in- 
terest. 

Nor  is  interest  the  only  cause  of 
error  in  this  matter;  it  is  by  no 
means  an  uncommon  incident  for 
impartial  men,  equally  expert,  to 
differ  in  their  views  as  to  the  sub- 
stantial identity  and  equivalency  of 
devices,  or  as  to  their  patentabiUty. 

This  shows  that  in  considering 
this  class  of  complaints,  much  allow- 
ance is  to  be  made  for  difference  of 
judgment,  and  with  the  caution  that 
the  most  interested  judgment  is  not 
the  most  likely  to  be  correct. 

Then  again,  it  is  a  necessary  fea- 
ture of  the  patent  law,  not  so  gener- 
ally understood  as  it  should  be,  that 
changes  or  additions,  be  they  ever 
so  trifling  apparently,  in  existing 
devices,  whether  patented  or  not, 
are  entitled  to  letters-patent  if  they 
involve  any  degree  of  invention,  to 
be  determined  mainly  by  the  test  of 
result. 

Many  a  patentee  discovering  that 
some  one  has  patented  an  improve- 
ment upon  his  invention,  an  im- 
provement which  no  doubt  to  him 
seems  more  questionable  or  trifling 
than  it  may  to  others,  is  filled  with 
resentment,  first  at  the  presumed 


26  Ordinary  Criticisms  of  the  PcUent  Office  Considered. 


poacher  upon  his  fancied  domain, 
and  next  at  the  Patent  Office  for 
allowing  and  indorsing  the  imagined 
intrusion.  This  is  all  wrong,  but  is 
loudly  insisted  on,  in  proportion  to 
its  wrongfulness.  It  arises  mainly 
from  the  one  grand  fallacy,  that  the 
patent  laws  are  intended,  not  for 
the  benefit  of  the  public  at  large, 
but  for  that  of  inventors  in  particu- 
lar. 'Not  does  a  patentee  thus  com- 
plaining usually  stop  to  reflect, 
that,  but  for  the  examining  system 
he  so  bitterly  accuses,  the  subse- 
quent patent,  in  which  the  fancied 
injury  lies,  might  have  embraced 
not  only  the  improvement,  but  also 
his  own  invention,  thus  working  a 
substantial  mischief,  to  be  abated 
perhaps  only  by  litigation. 

It  is  complained  that  many  re- 
jections are  not  for  just  and  suffi- 
cient cause,  and  that  inventors  are 
often  refused  patents  for  that  which 
is  patentable.  As  to  this  particular 
complaint  it  is  to  be  observed  that 
failures  to  obtain  a  patent  for  that 
which  is  patentable,  cannot  be  fair- 
ly charged  as  failure  of  justice  until 
it  be  shown  that  every  means  which 
the  examining  system  provides  for 
obtaining  his  claim  has  been  ex- 
hausted by  the  inventor  in  vain. 
This  removes  from  the  category  of 
cases  in  point,  those  in  which  the 
inventor  has  not  elected  to  exercise 
his  right  of  appeal  from  a  first  or 
second  adverse  judgment.  Thus  the 
nimaber  of  pertinent  examples  is  very 
materially  reduced. 

It  may  be  safely  asserted  that  a 


critical  and  impartial  judgment 
would  find  those  cases  very  few  in- 
deed in  which  a  just  claim  of  inven- 
tion, properly  presented  and  prose- 
cuted as  far  as  possible,  has  been 
refused. 

But  it  is  further  complained  that 
improper  rejections  by  subordinate 
officers  drive  applicants  to  the  ex- 
pense and  delay  of  appeals,  or  lead 
to  the  abandonment  of  applications, 
or  where  they  do  not  have  one 
of  these  effects,  still  cause  unneces- 
sary expenditure  of  time  and  trouljle 
in  obtaining  patents.  Tlicro  is 
truth  in  this  complaint,  and  we 
shall  have  occasion  to  discuss  the 
causes  of  the  evil.  But  our  present 
purpose  is  to  point  out  to  those  who 
would  enter  upon  a  consideration 
of  the  examining  system  and  its 
administration  impartially,  certain 
facts  and  reasons  tending  greatly  to 
diminish  the  real  weight  of  these 
complaints. 

It  is  first  to  be  noted  that  apjieals, 
whether  justly  or  unjustly  occa- 
sioned, are  exceptional.  It  is  a  fact 
that  the  great  majority  of  patents 
issued  are  allowed  by  the  officers  to 
whom  the  cases  are  first  referred. 
In  these  instances,  presuming  the 
inventor  to  have  performed  his  part 
of  the  duty  by  presenting  his  claim 
in  proper  and  intelligible  form,  the 
process,  expense,  and  time  required 
are  in  general  as  simple,  moderate, 
and  brief  as  possible.  It  is  a  ques- 
tion which  we  shall  have  occasion 
to  inquire  into,  whether  the  extreme 
simplicity  and  facility  do  not  work 


Ordinary  Criticisms  of  the  Patent  Office  Considered.  27 


injustice  of  anothei*  kind  to  the  pub- 
lic and  inventors  ;  but  the  alleged 
injustice  with  which  we  are  now 
dealing  is  that  of  expense  and 
delay. 

As  to  abandonment  of  applica- 
tions, it  is  to  be  said,  that  in  most 
cases  it  is  voluntary^  arising  either 
from  the  applicant's  ignorance  of  his 
rights,  or  from  indiflerence  or  want 
of  energy,  in  either  of  which  cases 
the  fault  is  his  own.  It  ma}'  be  ad- 
mitted that  the  mistakes  of  exami- 
ners have  t)n  rare  occasions  led  to 
the  involuntary  abandonment  of 
just  claims.  Such  cases  must  be 
exceedingly  few,  since  the  fees  for 
appeals  are  so  small  as  to  be  within 
the  command  of  almost  every  one. 

As  to  difficulties  l)eing  cast  in  the 
way  of  obtaining  patents  bj-  the 
mistakes  of  officers,  there  is.  vastly 
more  substance  in  this  branch  of 
the  complaint  than  in  the  other. 
At  the  same  time  it  is  an  evil  which 
has  been  greatly  exaggerated  by  the 
natural  prejudices  of  inventors. 

An  inventor  looking  at  patents  in 
the  fallacious  light  which  we  have 
been  endeavoring  to  expose  and 
controvert,  and  regarding  himself 
as  the  only  party  interested  in  the 
patent  laws,  satisfied,  too,  in  his 
own  mind,  with  or  without  inquiry, 
that  his  invention  is  new  and  use- 
ful, and  that  a  patent  is  his  right, 
chafes  at  what  he  considers,  in  his 
particular  case  at  least,  to  be  a  use- 
less delay.  The  same  man,  having 
real  estate  to  sell,  would  hardly  ex- 
pect any  one   to  purchase  without 


taking  the  time  to  satisfy  himself 
upon  the  question  of  title.  Let  him 
reflect  then  that  the  public,  in  grant- 
ing him  a  patent  for  his  invention, 
does  so  by  way  of  purchase,  and 
that,  unless  his  invention  be  new 
and  useful,  he  has  nothing  to  sell, 
the  public,  in  providing  that  its  offi- 
cers shall  take  necessary  time  and 
proceedings  to  determine  these  ques- 
tions before  consummating  the  bar- 
gain, is  doing  simply  what  any  busi- 
ness man  would  do  in  like  case. 

It  is  an  important  fact  to  be  re- 
membered too,  that  of  the  delays 
and  expenses  incurred  through  re- 
jections of  applications,  a  very  large 
percentage  is  due  to  the  informal, 
imperfect,  and  unskilful  preparation 
and  presentation  of  such  applica- 
tions by  inventors  or  their  repre- 
sentatives. This  is  a  fruitful  cause 
of  difficulty  of  which  little  is  heard 
for  very  obvious  reasons ;  it  is  a  cause 
likely  to  be  overlooked,  or  at  least 
not  openly  acknowledged  by  the 
parties  to  whom  it  is  due. 

It  is  the  prevalent  error  in  these 
complaints  of  expense  and  delay, 
that  they  are  directed  against  the 
Patent  Office  indiscriminately,  with- 
out perception  of,  or  reference  to, 
their  true  causes.  Occurring  in  the 
Office,  they  are  charged  to  the  Office  ; 
and  to  this  not  only  the  natural  im- 
patience of  inventors  leads,  but  the 
conceit  or  the  lack  of  candor  of 
many  of  a  large  body  of  professional 
men. 

This  is  not  to  be  wondered  at 
while  there  is  among  so  large  a  pro- 


28 


Actual  Defects  of  the  Patent  Office  and  the  Remedy. 


portion  of  inventors,  a  one-sided  and 
partial  understanding  of  the  nature 
and  object  of  the  patent  laws. 

This  leads  them  to  measure  the 
justice  and  efficiency  of  the  admin- 
istration of  the  laws  solely  by  the  ease 
and  readiness  with  which  patents  are 
allowed,  a  test  so  obviously  wrong, 
that  nothing  more  need  be  said 
about  it. 

That  tliis  should  be  the  case  with 
inventors  is  not  i)erhaps  to  be  won- 
dered at,  but  it  is  a  somewhat 
astonishing  and  discreditable  fact, 
that  this  false  sentiment  is  echoed 
and  encouraged  by  some  of  those 
whose  profession  it  is  to  make  and 
prosecute  the  applications  of  inven- 
tors. 

That  an  inventor  should  find  in 
every  unexpected  lapse  of  time  or 
dollar  of  expense  incurred  in  the  at- 
tainment of  his  wishes  an  instance 
of  personal  injury  and  a  cause  of 
complaint  is  not  unnatural,  but  for 
a  man,  whose  profession  should  be- 
speak a  fair  understanding  of  the 
law,  and  a  cool  judgment,  to  adopt 
or  to  counterfeit  the  like  hot-headed, 
misjudging  impatience,  speaks  little 
for  his  capacity  or  his  candor. 

While  thus  contending  that  the 
class  of  complaints  with  which  we 
have  been  dealing,  have  received  a 
degree  of  weight  and  credit,  to 
which  they  are  by  no  means  enti- 
tled, we  would  not  be  understood  as 
denying  that  there  have  been  some 
just  grounds  for  such  complaints. 

Such  legitimate  causes,  though 
on  examination  they  will  be  found 


to  be  infinitely  fewer  than  may  be 
commonly  supposed,  are  yet  more 
numerous  than  need  be,  and  while 
they  do  not  serve  to  point  the  ex- 
travagant arguments  which  liave 
been  based  upon  them,  they  do  serve 
to  indicate  very  possible  improve- 
ments of  administration. 

CHAPTER  VII. 

ACTUAL  DEFECTS  OF  THE  PRESENT 
ORGANIZATION  OF  TUE  PATENT 
OFFICE  AND  THE  REMEDY. 

Having  seen  how  strongly  the 
ordinary  criticism  of  the  adminis- 
tration of  the  examining  system  is 
from  the  very  nature  of  things 
tinctured  by  interest  and  mistaken 
prejudice,  and  how  much  of  it 
is  based  upon  opinion,  not  al- 
ways the  most  comi)etent  or  im- 
partial, let  us  next  see  what  evils 
the  most  impartial  inquiry  will  be 
disposed  to  allow,  either  as  exist- 
ing or  as  threatening,  and  inquire 
whether  they  are  of  such  a  nature, 
and  so  mischievous  that  their  exist- 
ence or  probability  presents  a  fair 
argument  against  the  wisdom  of 
the  system. 

The  object  of  the  system,  as  we 
have  seen,  is  to  ascertain  at  a  time 
most  advantageous  to  the  public 
and  to  the  inventor,  that  is,  before 
a  patent  is  granted,  whether  the 
subject  sought  to  be  patented  is 
legally  patentable. 

The  questions  to  be  looked  into 
may    be    stated    generally   as    the 


Actual  Defects  of  the  Patent  Office  and  the  Remedy. 


29 


novelty  and  utility  of  the  invention, 
but  these  embrace  a  variety  of  ques- 
tions, requiring  for  their  proper 
solution,  experienced  and  sound 
judgment. 

The  most  oljvious  labor  which  the 
system  involves  is  that  of  research  ; 
for  the  thorough  and  impartial  per- 
foruiance  of  this  duty,  it  will  not  be 
denied,  an  organization  like  that 
of  the  Patent  Office  is  most  admira- 
bly adapted. 

It  is  in  the  assumption  of  this 
duty  by  the  public  through  its 
designated  officers,  that  the  real  be- 
nevolence of  the  examining  system 
is  most  strikingly  apparent ;  for 
inventors  individually  to  make  the 
researches  necessary  to  determine 
with  any  degree  of  satisfaction 
whether  their  inventions  are  new  or 
old,  would  in  most  cases  be  utterly 
impracticable,  and  could  not  be  at- 
tempted save  at  enormous  cost  of 
time  and  money.  In  applying  the 
moderate  fees  asked  of  applicants 
for  patents  to  the  collection  and 
compact  and  systematic  arrange- 
ment of  the  means  for  readily 
making  these  researches,  and  to 
the  payment  of  a  sufficient  number 
of  offlcei's  to  make  them,  when  it  is 
most  to  the  advantage  of  inventors 
that  they  should  l)e  made,  the  law 
proceeds  upon  principles  of  true 
liberality  and  justice. 

Ikit  the  proper  application  of  these 
researches  involves  judgment  upon 
matters  of  diverse  natures,  requir- 
ing for  their  consideration  different 
kinds  of  knowledge  and  experience. 


The  question  of  novelty  is  not 
one  merely  of  the  apparent  similar- 
ity or  diversity  of  things  in  matter 
of  form  or  constituent  parts  or  oper- 
ation, it  is  not  a  question  addressed 
merely  to  the  eye  or  ear. 

The  questions  of  novelty'  and 
utility  are  naturally  blended  thus 
far,  that  inventions  are  really  new 
inventions,  entitling  their  inventors 
to  be  treated  as  producers  to  the 
public  stock,  only  when  useful  in 
the  sense  of  availability  to  some 
beneficial  end. 

It  therefore  often  becomes  a  mat- 
ter for  nice  discrimination  and  judg- 
ment to  determine  whether  the 
points  of  apparent  difference  be- 
tween one  device  and  another  in- 
volve this  utility,  and  so  go  to  con- 
stitute patentable  novelty,  or  wheth- 
er they  are  mere  barren  changes  of 
no  effect. 

And  apart  from  its  bearing  upon 
the  question  of  novelty,  that  of  util- 
ity is  in  itself,  one  for  the  intelligent 
consideration  of  which  a  high  de- 
gree of  knowledge  and  discretion  is 
often  required. 

Then  as  the  law  has  specified  dif- 
ferent classes  of  patentable  subject- 
matter,  it  frequently  becomes  ne- 
cessary to  decide  under  which  of 
them,  a  particular  invention  is  pro- 
perly to  be  classed,  and  whether 
therefore  it  is  or  is  not  patentable 
as  described  and  claimed  by  the  ap- 
plicant. 

And  as  the  first  inventor  only  of 
a  new  and  useful  device  is  entitled 
to  a  patent,  the  questions  to  be  de 


30 


Actual  Defects  of  the  Patent  Office  and  the  Remedy. 


cided  in  the  Patent  Office  are  not 
only  those  which  in  every  case  exist 
between  claimants  and  the  public, 
but  those  also  which  frequently  arise 
between  different  claimants  of  the 
same  invention.  These  are  judicial 
questions  requiring  for  their  proi)er 
determination  a  knowledge  of  gen- 
eral and  of  patent  law. 

The  various  questions  then,  which 
necessarily  arise  in  the  administra- 
tion of  an  examining  system,  require 
the  union  witliin  the  Office  of  differ- 
ent capacities  and  accomplishments ; 
there  must  be  diUgent  research, 
there  must  be  capacity  to  judge  upon 
questions  of  fact  touching  matter  in 
the  various  practical  arts,  and  there 
must  be  capacity  correctly  to  apply 
the  law  to  the  various  states  of  fact. 

Applications  for  letters-patent  are 
very  niunerous,  they  relate  to  many 
different  branches  of  art,  and  in 
their  consideration,  as  we  have  seen, 
man}'^  questions  of  diverse  kinds 
arise. 

For  the  administration  therefore 
of  the  examining  system,  an  exten- 
sive organization  is  required  em- 
bracing many  officials. 

Now  the  evils  likely  to  arise  in 
such  a  state  of  affairs  will  readil}- 
suggest  themselves ;  they  are  the 
dangers  incident  to  any  organiza- 
tion embracing  various  classes  of 
duties,  the  proper  ijerformance  of 
some  of  which  requires  that  they 
should  concentrate  in  the  liands  of 
a  few,  of  others  that  they  should  be 
divided  among  many. 

An    improper  division    of   labor 


without  due  regard  to  the  capacities 
required  for  its  proper  performance  ; 
the  intrusting  of  that  to  many  which 
could  be  more  satisfactorily  per- 
formed by  a  few ;  the  improper  con- 
junction of  opposite  duties,  some 
executory,  others  discretionary  and 
judicial,  some  requiring  chiefly  time 
and  diligence,  others  requiring  spe- 
cial knowledge  and  capacity,  and 
the  too  general  dispersal  of  impor- 
tant powers. 

Such  mischiefs  as  these  are  likelj'', 
if  not  carefully  pro\'ided  against,  to 
creep  into  any  such  organization, 
and  to  cause  conflicts,  confusion, 
and  lack  of  uniformity,  exposing  the 
whole  structure  to  the  charge  of 
cumbrousness  and  inefficiency. 

Into  such  mischiefs  and  its  con- 
sequent accusation  has  the  Patent 
Office  in  fact,  to  some  extent,  justly 
fallen. 

In  looking  for  the  cause  of  this 
we  may  proceed  upon  the  principle, 
heretofore  indicated,  that  the  labor 
of  the  Patent  Office  is  of  two  kinds, 
one  calling  for  intelligent  research, 
the  other  for  judgment. 

The  chief  requisites  for  the  proper 
performance  of  the  first  class  are 
time,  diligence,  and  division  of  labor; 
for  the  second,  the  wants  are  learn- 
ing and  capacity,  and  so  far  as  pos- 
sible, concentration  of  authority. 
Division,  so  far  from  being  a  neces- 
sity here,  is  a  grave  objection,  and 
for  the  evident  reason,  that  in  mat- 
ters of  judgment  affecting  important 
interests  the  desiderata  are  certainty 
and  uniformity. 


Actual  Defects  of  the  Patent  Office  and  the  Remedy. 


31 


Any  one  aware  of  the  present 
constitution  of  the  Patent  Office  will 
admit  that  these  iirinciples  have  not 
in  practice  been  recognized  to  that 
extent  which  the  law  originally  con- 
templated. 

In  the  early  days  of  the  Patent 
Office,  when  inventions  were  com- 
paratively few,  the  labor  and  au- 
thority were  placed  in  the  hands  of 
one  or  two  men.  The  demand  on 
the  Office  grew  more  rapidly  than 
had  been  anticipated,  and  the  ne- 
cessity for  a  division  of  labor  be- 
came apparent.  It  was  a  natural 
though  a  mischievous  result,  that 
with  the  division  of  labor  there  was 
also  a  division  of  authority,  which 
necessarily  resulted  in  a  want  of  uni- 
formitj'  in  the  practice  of  the  Office. 

In  18o5,  Judge  Mason,  then  Com- 
missioner of  Patents,  ixjrceived  the 
difficulties  which  had  even  then, 
when  there  were  but  twelve  princi- 
pal examiners,  arisen  from  this  sub- 
division of  independent  judicial  ac- 
tion. The  judge  said,  in  his  report, 
"  There  are  very  grave  objections  to 
a  further  increase  of  the  number  of 
principal  examiners.  The  system 
has  already  overgrown  in  that  re- 
si^ect,  and  seems  almost  impera- 
tively to  denuxnd  some  modification 
to  give  it  a  proper  harmony  and 
uniformity  of  action.  They  (the 
examiners)  act  to  a  considerable 
extent  independently  of  each  other, 
and  possessing  very  different  minds 
and  views  they  follow  difterent  rules 
of  action  and  decision." 

To-day,  we  see  the  duties  and  the 


powers  originally  designed  to  be 
exercised  by  one  man  or  at  least  by 
a  few  men,  acting  in  conjunction^ 
divided  among  more  than  a  score 
of  officers  acting  independently  of 
each  other,  and  what  is  worse,  to 
a  great  degree  independently  of 
the  really  responsible  power  of  the 
Office. 

It  is  here  that  the  evil  lies,  and 
the  parties  injured  are  not  merely 
those  from  whom  the  loudest  cries 
of  injury  are  heard,  not  those  im- 
patient men  who  measure  the  jus- 
tice and  efficacy  of  the  system  by 
the  ease  and  readiness  with  which 
the  Office  may  coincide  with  their 
views. and  gratify  their  wishes,  but 
the  public,  and  those  patentees  whose 
interests — measured  by  the  value  of 
their  contributions  to  the  practical 
arts — are  of  great  weight. 

To  the  rights  or  presumed  rights 
of  applicants,  the  power  of  apjieal 
gives  ample  protection  against  the 
adverse  action  of  any  of  the  score  of 
examiners,  but  the  rights  of  the 
public  and  those  of  prior  patentees 
have  no  such  protection. 

Yet  there  can  be  no  doubt  that 
this  defect  in  the  organization  of 
the  Patent  Office  is  really  also  of 
serious  injury  to  applicants  for 
patents.  While.it  does  not  neces- 
sarily tend  to  ultimate  and  perma- 
nent injustice,  it  certainly  does 
tend  to  vexatious  trouble  and  delay, 
in  themselves  grave  injustice. 

Plainly  the  existence  of  a  large 
number  of  nominally  subordinate 
but    in  effect   independent  officers. 


32 


Actual  Defects  of  the  Patent  Office  and  the  Remedy. 


each  one  of  them  uniting  in  himself 
executive  and  judicial  functions, 
and  this  without  that  direct  respon- 
sibility wliich  should  attach  to  such 
functions — officers  whose  actions  are 
to  a  great  extent  uncontrolled  by 
the  authority  with  whom  is  placed 
the  responsibility  for  the  proper  ad- 
ministration of  the  law — presents  an 
anomalous  and  mischievous  state  of 
affairs.  Every  officer  may  consti- 
tute a  little  court  of  his  own,  and 
may  adopt  his  own  maxims  of  law 
and  of  practice,  and  it  will  be  a 
marvel  in  the  history  of  human  na- 
ture if  the  disposition  to  do  this  is 
not  in  an  inverse  ratio  to  the  real 
capacity  and  responsibiUty  of  the 
man. 

This  is  an  evil  fruitful  of  doubt 
and  delay,  needlessly  embarrassing 
inventors  in  tbe  presentation  and 
prosecution  of  their  claims,  provoc- 
ative of  prejudice  and  irregular 
practice,  and  it  is  an  evil  of  which 
in  the  present  organization  of  the 
Ofiice,  there  is  constantly  increas- 
ing danger.  Fortunately,  as  a  rule, 
the  officers  of  the  Patent  Office 
have,  considering  the  temptation 
and  the  opportunity,  been  signally 
free  from  dangerous  assumptions  of 
authority. 

Far  from  attributing  the  want  of 
uniformity  in  the  action  of  the  Pat- 
ent Office,  and  the  evils  resulting 
therefrom,  to  the  officers  of  that 
Bureau  personally,  we  should  be 
doing  an  injustice  to  many  accom- 
plished gentlemen  who  have  occu- 
pied, or  who  now  occupy,  the  re- 


sijonsible  position  of  Examiner,  if 
we  failed  to  record  our  opinion  that 
the  degree  of  uniformity  of  action 
is,  considering  the  circumstances, 
somewhat  astonishing,  and  may  be 
charged  to  the  good  sense  and  abil- 
ity of  these  officers  as  a  rule,  and  to 
their  observance  of  the  instructions 
derived  during  the  last  few  years 
from  able  heads  of  the  Office. 

True  there  have  been,  and  will 
probably  continue  to  be,  examiners 
with  perverted  ideas  ;  men  who  con- 
sider they  are  best  performing  their 
duties  by  presenting  every  obstruc- 
tion to  the  grant  of  patents  by 
technical  objections  and  trifling  ac- 
tions ;  others  again,  who  will  manu- 
facture patent  law  of  their  own, 
and  others  who  through  a  spirit  of 
display  will  apply  theoretical  dog- 
mas derived  from  collegiate  cram- 
ming in  cases  where  practical  knowl- 
edge and  common  sense  would  be  a 
much  more  available  means  of  ar- 
riving at  a  correct  j  udgment.  These 
officers  are  the  exception,  but  the 
mischief  they  have  caused,  and  con- 
tinue to  cause,  is  great,  so  great 
as  to  reflect  more  or  less  odium  on 
the  whole  examining  corps,  so  that 
the  many  intelligent  otticers  have 
had  to  bear  the  brunt  of  objec- 
tions attributable  to  the  freaks  of 
the  few. 

Undoubtedly  this  division  of  power 
has  worked  great  mischief  to  appli- 
cants for  patents,  and  for  the  same 
reasons  that  it  has  worked  still 
greater  mischiefs  to  the  public 
and  to   patentees.    It  creates  too 


Actual  Defects  of  the  Patent  Office  and  the  Remedy. 


33 


many  irresponsible  judges,  and 
unites  too  various  functions  in  the 
same  oflScers  without  due  reference 
to  the  various  capacity  and  knowl- 
edge required.  The  nature  of  the 
resulting  mischief  varies  with  the 
character  of  the  otiicers,  the  ten- 
dency of  whose  errors  will  be  in 
some  cases  to  grant  patents  which 
should  not  be  granted,  in  others  to 
withhold  them  when  they  should 
be  granted,  and  thus  action  will  be- 
come regulated  rather  by  personal 
character  and  whim,  than  by  any 
fixed  and  clear  principles. 

This  will  all  the  more  be  the  ten- 
dency because  the  powers  which 
these  officers  separately  exercise  are 
of  a  nature  requiring  for  their  proper 
exercise  a  union  of  capacities  and 
attainments  not  conmionly  found  in 
one  mind.  The  questions  of  fact, 
and  of  mixed  fact  and  law,  con- 
stantly coming  up  for  consideration, 
call  both  for  scientific  and  practical, 
and  for  legal  knowledge  and  judg- 
ment. It  is  in  the  latter  branch 
that  the  examiners  are  most  likely 
to  be  deficient,  as  their  selection  is 
supposed  to  be  governed  by  their 
presumed  knowledge  in  the  various 
branches  of  the  practical  arts. 

Legal  reasoning  is  not  to  be  ex- 
pected from  those  not  grounded  in 
legal  principles ;  and  there  is  no 
branch  of  the  law  admitting  of 
more  refined  and  subtle  distinctions, 
requiring  a  more  delicate  and  skil- 
ful handling  than  that  relating  to 
patents.  "Patents,"  said  Judge 
Story,  "are  the  very  metaphysics 


of  the  law."  It  is  not  one  of  the 
least  alarming  signs  of  the  system 
as  now  conducted,  that  the  applica- 
tion of  the  law  to  a  subject  so  deli- 
cate and  so  important  as  that  of  in- 
vention, is  so  largely  left  to  a  number 
of  men  of  whom  many  will  have  no 
better  guide  in  their  attempted  ap- 
plication of  judicial  doctrine  than 
the  letter  of  Law  Reports,  whose 
spirit  they  cannot  grasp. 

The  necessary  union  of  qualifica- 
tions is  not  likely  to  be  found  in 
each  one  of  more  than  a  score  of 
men. 

But  even  suppose  that  this  end 
could  be  accomplished,  still  the  pres- 
ent organization  of  the  Office  would 
be  defective  ;  for  where  there  is  not 
coaction  there  cannot  be  unanimity, 
and  especially  in  regard  to  a  subject 
where  so  much  difference  of  opinion 
may  arise  among  the  most  expert 
and  intelligent  minds. 

But  is  the  evil  incapable  of  remedy 
or  avoidance  ?  The  nature  of  the 
remedy  is  indicated  by  the  nature 
of  the  evil ;  but  there  may  be  those 
who  will  doubt  the  feasibility  of 
applying  the  remedy.  A  return  to 
the  original  constitution  of  the  Of- 
fice is  of  course  impossible,  but 
surely  a  return  to  original  princi- 
ples is  not.  If  the  duty  of  research, 
requiring  time  and  diligence,  were 
more  completely  separated  than  now 
rom  that  of  judgment,  which  re- 
quires rather  knowledge  and  tact,  the 
result  would  be  a  more  satisfactory 
performance  of  both  duties.  United 
in  the  same  hands,  the  two  duties 


34 


Benefits  of  an  Examining  System. 


become  a  mutual  embarrassment ; 
they  are  diverse  in  natm-e,  call  for 
different  kinds  and  degrees  of  men- 
tal capacities  and  attainments,  and 
he  who  may  most  satisfactorily  per- 
form the  one  may  be  most  unfitted 
for  the  other.  For  the  labor  of  re- 
search, that  which  requires  time 
and  nmnbers,  the  present  organiza- 
tion of  the  Office,  with  its  very  com- 
plete subdivisions,  is  perhaps  as 
good  as  could  be  devised,  and  its 
efficiency  would  be  greatly  increased 
by  the  more  complete  separation  of 
this  class  of  -labor  from  the  other. 

And  as  for  what  may  be  termed 
the  judicial  part  of  the  duty,  plainly 
it  could  be  more  speedily  and  satis- 
factorily performed  by  a  few  men 
acting  in  union,  and  ha\'ing  laid 
before  them  the  evidence  upon 
which  they  are  to  form  their  judg- 
ment, than  it  can  possibly  be  by  a 
much  larger  number  of  men  acting 
independently  and  liaving  with  the 
duty  of  judging  that  also  of  looking 
up  the  evidence.  The  resjMjnsibility 
which  attaches  to  judgment  would 
in  this  way  rest  with  a  small  body 
of  men,  selected  for  their  capacity, 
acting  in  union,  and  not  diverted 
from  the  efficient  performance  of 
their  duties  by  labor  wliich  could  as 
well  be  performed  by  another  class 
of  officers.  Thus  the  practice  of  the 
Office  would  be  more  thorough,  more 
efficient,  and  more  unifonn. 

It  is  not  our  purpose  to  suggest 
the  legislation  which  may  be  re- 
quired, or  the  details  of  a  mode,  for 
working  this  desirable  change.   We 


have  simply  undertaken  to  point 
out  wherein  the  real  evils  of  the  or- 
ganization as  it  now  is,  exist  and 
have  their  origin,  and  the  prin- 
ciples which  it  would  seem  shovdd 
govern  any  endeavor  to  remedy  and 
obviate  such  evils. 

The  perfect  feasibility  of  carrying 
out  these  principles  will  hardly  be 
disputed,  but  what  legislation  and 
what  changes  would  best  carry  them 
out,  is  a  matter  in  which  there  may 
well  be  diversity  of  opinion. 

We  have  only  to  add  that  the  pres- 
ent accomplished  head  of  the  Office, 
from  whom  we  liave  received  valu- 
able information,  has  every  faith  in 
the  perfect  feasibility  and  absolute 
necessity  of  carrying  out  these  princi- 
ples, and  his  opportunities  of  judg- 
ing of  the  want  of  uniformity  of 
action,  together  w^ith  his  past  able 
administration  of  the  Office,  ix)int  to 
him  as  the  one  most  able  to  judge 
as  to  what  legislation  may  be  re- 
quired to  correct  an  evil  which,  if 
permitted  to  grow,  must  eventually 
undermine  our  Patent  System. 

CHAPTER  VnL 

BENEFITS  OF  AN  EXAMINING 
SYSTEM. 

While  recognizing  the  defects  in 
the  present  organization  of  the  Pat- 
ent Office,  and  the  evUs  which  have 
ensued  from  them,  and  which  are 
likely  to  grow  unless  speedily  check- 
ed, we  are  not  of  those  who  discover 
in  the  past  history  of  the  organi- 
zation any  such  traces  of  inherent 


Benefits  of  an  Examining  System. 


35 


mischief  as  serve  to  indicate  im- 
practicability in  an  examining  sys- 
tem. 

On  the  contrary  we  contend  that 
the  past  administration  of  the  ex- 
amining system  has  been  productive 
of  good,  entirely  outweighing  the 
evil. 

"VVe  have  adduced  certain  official 
figures  which  show  that  in  the 
year  1870  to  a  little  more  than 
19,000  applications  made,  the  num- 
ber rejected  was  nearly  5000. 

Xow  supposing  that  but  one- 
third  even  of  these  rejections  were  on 
proper  grounds,  or  need  have  been 
acquiesced  in  by  the  applicant,  what 
saving  of  time,  and  money,  and  la- 
bor, that  might  otherwise  have  been 
thrown  away  in  fruitless  enterprise 
or  litigation,  do  more  than  fifteen 
hundred  rightfully  rejected  cases  in 
the  course  of  one  year  represent ; 
what  value  in  protection  to.  the  re- 
spectability and  consequent  value 
of  patent  property  in  general,  is 
represented  by  the  withholding  in 
one  year  of  fifteen  hundred  patents, 
Avhich,  granted,  would  not  have 
been  worth  the  paper  on  which  they 
were  printed. 

These  are  points  which  are  apt 
to  escape  consideration,  yet  when 
brought  to  mind  they  are  very  sug- 
gestive. 

Then  turn  to  another  effect  of  the 
examining  system,  defectively  ad- 
ministered as  it  may  be  ;  we  allude 
to  what  may  be  termed  its  advisory 
and  restraining  effect.  !„  is  the 
very  clear  interest  of  inventors  to 


claim  all  that  they  imagine  them- 
selves entitled  to,  and  this  is  ex- 
ceedingly likely  to  be  more  than  in 
fact  they  are  entitled  to.  Claims 
often  include  with  that  which  is 
new,  that  also  which  is  old,  and 
either  public  property  or  the  prop- 
erty of  some  prior  patentee.  Ko  can- 
did man,  having  experience  in  these 
matters,  will  deny  that  the  admin- 
istration of  the  examining  system 
has  worked  almost  incalculable 
good  to  applicants,  to  patentees,  and 
to  the  public,  in  pointing  out  and 
checking  these  unwitting  or  deliber- 
ate intrusions  upon  public  or  appro- 
priated ground,  and  indicating  the 
real  bounds  of  invention.  This 
service  has  protected  the  interests 
of  many  a  patentee,  has  thrown 
much  needed  Ught  upon  many  an 
inventor's  path,  has  tempered  his 
too  buoyant  anticipations  before 
they  had  led  him  into  expenditures 
and  enterprises,  which  blindly  pur- 
sued, would  have  resulted  in  com- 
plications, loss,  and  bitter  disap- 
pointment, and  in  every  such  sav- 
ing to  inventors  is  reflected  a  sav- 
ing to  the  public. 

And  there  is  still  another  benefit 
necessarily  proceeding  from  exam- 
ination, a  benefit  of  such  import- 
ance that  it  might  in  itself  be  deem- 
ed an  offset  to  many  mischiefs. 
We  refer  to  the  necessity  for  clear 
and  full  specifications,  and  precise 
claims. 

The  scrutiny  which,  in  examina- 
tion, descriptions  and  claims  un- 
dergo, must  act  as  an  effectual  curb 


36 


Benefits  of  an  Examining  System,. 


upon  carelessness,  duplicity,  and 
vagueness  in  their  preparation.  An 
applicant  must,  in  his  own  interest, 
be  frank  and  precise  in  his  state- 
ments, and  thus  a  general  correct- 
ness is  engendered,  the  importance 
of  which  to  public  and  private  in- 
terests cannot  be  overestimated. 
There  cannot  be  in  American  pat- 
ents that  indefiniteness  or  vague 
generality  of  description  and  claim 
which  is  so  conspicuous  in  many 
foreign  patents,  and  which  at  once 
requires  litigation  to  unravel,  and 
renders  litigation  tedious,  expen- 
sive, and  imsatisfactory. 

And  who  can  estimate  the  value 
of  the  Patent  Office  records,  under 
the  examining  system,  in  respect  to 
the  light  which  they  sen'e  to  throw 
on  the  legal  status  and  the  commer- 
cial value  of  patents  ?  Upon  every 
patent  issued,  the  record  of  the  ap- 
plication, of  the  rejections  it  may 
have  met,  the  reasons  for  these  re- 
jections, the  references  given  to  prior 
inventions,  forms  a  compact  com- 
mentary, which,  while  at  times  it 
may  only  show  how  singularly 
at  fault  the  official  judgment  has 
been,  is  yet  calculated  to  be  of  in- 
valuable service  in  aiding  and  guid- 
ing those  who  may  desire  to  judge 
for  themselves  to  what  extent  the 
value  of  a  patent  is  affected  by  what 
has  gone  before. 

iNor  will  it  escape  the  notice  of 
the  impartial  critic  that  the  admin- 
istration of  the  examining  system, 
with  all  its  imjierfections  and  short- 
comings, has  done  very  much  to 


give  to  patents,  as  was  intended,  a 
higher  legal  and  commercial  status 
than  they  have  in  any  other  coun- 
try. That  is  certain,  which  can  be 
made  certain,  and  every  aid  to  ar- 
riving at  certainty  is  of  moment. 
How  much  of  that  all-important  ele- 
ment, certainty,  must  be  given  to 
patent  property  by  the  means  of  ar- 
riving at  it  which  the  Office  records 
furnish  ! 

There  can  be  no  doubt  that  the 
moral  weight,  the  weigRt  of  pre- 
sumption which  letters-patent  here 
carry  with  them  into  the  courts, 
and  among  that  portion  of  the  pub- 
lic who  have  any  understanding  of 
the  Patent  System,  has  done  very 
j  much,  not  only  to  simplify  and 
economize,  but  to  cut  off  litigation 
by  inspiring  confidence  on  the  side 
of  right,  and  caution  upon  that  of 
wrong. 

Nor  has  this  moral  power  as  we 
may  term  it,  of  patent  property,  de- 
creased, as,  if  the  administration  of 
the  examining  system  were  on  the 
whole  a  failure,  it  must  have  done, 
in  proportion  to  the  marvellous  in- 
crease in  the  quantity  of  such  prop- 
erty existing,  although  it  has 
doubtless  fluctuated  with  the  ap- 
parent competence  and  honesty,  or 
their  opposites,  in  the  ruling  powers 
at  the  Patent  Office. 

The  Patent  Office  is  a  very  exten- 
sive institution,  m  which  is  collected 
a  vast  amount  of  material,  rapidly 
augmented  by  constant  accessions. 
This  fact  has  led  many  to  i-egard 
I   the  organization  as  one  which  if 


Tlie  Examining  System  as  Viewed  from  Abroad. 


37 


not  already  cumbrous  and  unwieldy, 
must  speedily  become  so,  and  alarm- 
ing pictures  have  been  given  of  the 
tremendous  accretions  of  matter. 
It  is  asked  how  is  it  possible  for 
men  to  conduct  searches  with  speed 
and  certainty  amidst  such  records. 
Much  has  already  been  done  to 
solve  the  question,  by  division  of 
material  and  labor,  by  reducmg  the 
records  to  compact  and  accessible 
shape,  and  by  elaborate  classifica- 
tion, antl»no  doubt  exixsrience  will 
suggest  further  improvements  in  this 
direction.  There  is  in  truth  no 
organization  so  large  or  complex, 
that  a  spirit  of  system  and  order 
cannot  mould  it  into  a  simple  and 
smoothly  working  unit.  When 
the  same  correct  principles  have 
been  applied  to  the  arrangement  of 
duties  which  have  already  worked 
such  wonders  in  the  arrangement 
of  material,  the  Patent  Office  will 
become  an  example  of  efficiency  and 
order  and  uniformity  of  action. 

CHAPTER  IX. 

THE  EXAMINING  SYSTEM  AS 
VIEAVED  FROM  ABROAD. 

While  upon  the  subject  of  an  ex- 
amining system  it  will  not  be  out  of 
place  to  see  how  it  is  regarded 
abroad,  since  the  foreign  views  of 
the  subject  have  been  largely  gov- 
erned by  observance  or  report  of  the 
effect  of  the  system  as  administered 
in  this  country. 

We  have  already  had  occasion  to 
refer  to  some  of  the  peculiarities  and 


defects  of  the  English  Patent  Sys- 
tem, which  have  recently  attracted 
great  attention.  The  subject  has 
been  much  discussed  both  in  and 
out  of  Parliament,  and  committees 
of  inquiry  have  had  before  them  the 
testimony  of  many  promment  men, 
whose  position,  in  respect  to  the 
practical  arts,  or  whose  legal  attain- 
ment entitle  their  opinions  to  great 
consideration. 

The  defects  of  the  present  English 
system  are  generally  acknowledged, 
and  seem  to  have  divided  those  tak- 
ing part  in  the  discussion  into  two 
parties  :  1.  Those  who  would  abol- 
ish patents  altogether,  and  2.  Those 
who,  favoring  patents,  yet  perceiv- 
ing the  deficiency  of  the  present 
laws,  proposed  a  variety  of  remedial 
measures. 

Of  the  former  parties  the  number 
is  not  large,  nor  the  reasoning  such 
as  to  carry  any  weight  with  it. 

Apart  from  the  great  cost  of  pat- 
ents, the  one  great  deficiency  of  the 
law,  admitted  on  all  sides,  lies  in  the 
practically  indiscriminate  and  un- 
controlled issue  of  patents,  which 
leaves  ho7id  fide  inventors  at  the 
mercy,  to  a  great  extent,  of  unscru- 
pulous, pirates,  and  opens  the  door 
to  patents  for  merely  pretended  in- 
ventions, or  for  absurd  and  imprac- 
ticable schemes,  and  of  patents  with 
insufficient,  vague,  and  deceitful 
specifications  and  claims.  Still 
worse, — there  is  no  check  upon  the 
repeated  patenting  of  similar  inven- 
tions ,  and  the  rights  of  patentees 
are  left  in  a  cloud  of  darkness  which 


38 


The  Examining  System  as  Viewed  from.  Abroad. 


litigation  alone  can  break ;  this  last 
evil  being  aggravated  by  insufficient 
means  for  trying  patent  causes. 

The  various  remedies  proposed 
agree  in  this, — that  they  all  point  to 
some  mode  of  controlling  the  issue 
of  patents,  and  the  establishment  of 
some  special  tribunal  to  deal  with 
patent  questions.  As  to  the  precise 
mode  by  which,  and  the  time  when, 
the  ends  aimed  at  should  be  at- 
tained, there  seems  to  have  been 
some  difference  of  opinion. 

Of  course  in  a  discussion  of  this 
kind  our  examining  system  did  not 
escape  attention,  and  its  merits  and 
defects,  real  or  supposed,  were  freely 
canvassed. 

It  is  worthy  of  note,  however,  that 
those  who  advocated  the  adoption 
in  England  of  a  system  more  or  less 
analogous  were  men  whose  opinions 
were  entitled  to  the  greater  weight, 
as  they  spoke  from  personal  obser- 
vation and  experience. 

Among  these  was  Mr.  Aston,  a 
prominent  barrister,  who,  after  can- 
vassing the  defects  of  the  EngUsh 
law,  proceeds  to  suggest  certain 
remedies ;  and  speaking  of  them  as 
being  not  merely  speculative,  but 
such  as  had  been  tried,  thus  re- 
marks :  "  Those  to  which  I  attach 
the  most  importance  have  been  fully 
tried  in  the  United  States  of  Amer- 
ica, and  found  to  work  well.  I  mean 
the  exercise  of  discrimination  in  the 
grant  of  patents,  and  what  is  still 
more  Important,  the  deposit  he- 
fore  a  patent  Is  granted  of  a  pre- 
cise description  of  the  incention  and 


claims,  given  in  a  complete  specifi- 
cation, which  is  submitted  to  a 
proper  official  examination  before 
it  is  passed  as  sufficient.  My  own 
opinions  upon  the  working  of  the 
American  Patent  Laws  are  founded 
upon  a  personal  investigation  of  the 
system  adopted  in  the  United  States, 
and  from  continued  experience  gath- 
ered in  professional  practice.  My 
conviction  is  that  the  American  sys- 
tem, though  it  has  its  imperfections, 
does  work  better  than  ourf,  and  that 
because  it  has  cured  in  a  great  meas- 
ure the  defects  under  which  our  sys- 
tem is  still  laboring.'''' 

Mr.  J.  Howard,  an  inventor,  man- 
ufacturer, and  a  Member  of  Parlia- 
ment, while  replying  to  the  argument 
of  those  who  would  abolish  patents 
altogether,  remarked,  that  it  ap- 
peared to  him,  that  most  of  the  ar- 
guments that  had  been  urged  did 
not  touch  the  principles  of  a  patent 
law,  but  loent  rather  to  the  defects  of 
the  existing  law  and  its  administra- 
tion. Mr.  Howard  took  occasion  to 
allude  to  the  great  and  favorable  im- 
pression which  had  been  made  on  his 
mind  by  a  visit  to  the  United  States 
Patent  Office.  He  referred  to  the 
vital  necessity  for  amendments  in 
the  English  law,  and  expressed  the 
hox)e  that  when  the  subject  was 
taken  in  hand  by  the  law  officers  of 
the  ,Crown,  they  would  provide  the 
m,eansfoT  a  bond  fide  examination  of 
all  inventions  before  patents  were 
granted ;  and  also  provide  that  the 
specification  should  be  so  clear  that 
the  ptiblic  may  know  what  really  Vie 


The  Examining  System  as  Viewed  from  Abroad. 


39 


patent  loas  granted  for,  and  thus  save 
the  ruinous  cost  of  legal  x^roceedinys. 

Lord  Romilly,  Master  of  the  Rolls, 
while  among  those  inclined  to  the 
abolition  of  patents,  on  the  theory 
that  they  had  little  to  do  with  the 
progress  of  art  and  civilization,  sug- 
gested as  a  remedy  for  the  present 
inefficient  state  of  the  laws,  "  the  ap- 
pointment of  a  special  tribmial  of 
thoroughly  efficient  men,  who  should 
examine  and  pronounce  upon  all 
applications  for  patents,  and  grant 
them  according  as  they  might  think 
the  invention  new  and  useful ;  or 
withhold  them  if  the  application 
was  for  what  was  trivial,  worthless, 
injurious,  or  not  new." 

Still  another  advocate  for  the 
adoption  in  England  of  an  examin- 
ing system  analogous  to  ours  was 
found  in  the  pei'son  of  Mr.  Mundella, 
himself  a  manufacturer  of  wide  re- 
pute, and  who  has  been  a  visitor  in 
this  country. 

Of  course  argument  against  the 
adoption  of  such  a  system  was  not 
wanting.  Reference  was  made  to  re- 
marks proceeding,  it  would  appear, 
some  time  ago,  from  Mr.  Woodcroft, 
the  accomplished  Chief  Clerk  of  the 
English  Patent  Office,  whose  invalu- 
able services  in  superintending  the 
publications  of  that  office  have  gain- 
ed him  a  well-earned  repute.  But  Mr. 
Woodcroft's  objections  to  an  exam- 
ining system  seem  to  have  been 
singularly  unhappy  in  the  supposed 
facts  upon  which  they  are  based. 

Said  Mr. "Woodcroft,  "The  Amer- 
icans pay  about  i£23,000  a  year  for 


preliminary  examination,  and  they 
are  very  much  dissatisfied  with  it. 
The  system  of  preliminary  examina- 
tion has  been  tried  and  found  want- 
ing. It  is  in  operation  in  Prussia, 
but  does  not  give  satisfaction.  It 
was  tried  in  France,  Austria,  Sar- 
dinia, and  Belgium,  but  being  most 
unsatisfactory,  was  abandoned  in 
each  country.  It  is  now  going  on 
in  America  at  an  enormous  expense, 
and  the  Cliief  Commissioner  (?) 
wrote  to  me  to  say  that  it  was  a  very 
inadequate  system,  and  a  very  un- 
fair one." 

These  remarks  of  Mr.  Woodcroft's 
have  been  frequently  quoted  by  op- 
ponents of  the  American  examining 
system,  and  much  greater  impor- 
tance has  been  attached  abroad  to 
the  dictum  of  an  ex-offlcer  of  our 
Patent  Office,  who  is  styled  a  Chief 
Commissioner,  than  we  sliould  be 
wiUing  to  accord  to  it  here  in  view 
of  the  overwhelming  opinions  of  our 
best  authorities  in  favor  of  an  ex- 
amining system. 

But  we  find  Mr.  Woodcroft,  at  a 
more  recent  date,  saying:  "Let 
every  man  have  his  patent,  but  be- 
fore action  is  brought  let  the  origi- 
nality of  the  claim  of  the  invention 
be  sifted  by  the  most  competent  men 
of  the  day,"  a  theory  to  which  we 
shall  have  occasion  to  refer  to  here- 
after. 

That  in  Prussia  the  system  should 
have  been  a  failure,  no  one  will  won- 
der when  he  reads  the  testimony  of 
Mr.  Bessemer,  who  speaks  from  ex- 
perience of  the  honesty  and  benevo- 


40 


The  Examining  System  as  Viewed  from  Abroad. 


lence  of  the  working  of  the  Prussian 
system,  in  regard  ta  foreigners  at 
least.  Mr.  Bessemer  says  tliat  he 
did  not  take  out  a  patent  for  his  in- 
vention in  Prussia,  and  explains  the 
reason  thus  :  "  He  sent  his  paper  to 
Prussia  in  the  care  of  Mr.  Krupp, 
who  paid  him  £5000  for  the  use  of 
his  patent.  He  appUed  in  due 
course  for  a  patent,  and  was  in- 
formed by  the  Prussian  Patent 
Office  that  the  invention  was  not 
new.  The  Prussian  Patent  Office 
grant  occasional  patents ;  they  take 
the  fees  and  the  drawings  from 
British  inventors  in  any  case,  and 
afterwards  publish  them  for  the 
benefit  of  Prussia.  The  Office  said 
that  Mr.  Nasmyth  was  the  inventor 
of  the  process ;  Mr.  Nasmyth  said 
he  was  not.  They  next  said  they 
would  give  the  name  of  the  real 
man  in  a  few  days.  Six  weeks 
passed,  and  they  said,  '  If  we  don't 
find  the  name  of  the  real  man  to- 
morrow, we  wiU  give  you  a  patent.' 
A  week  of  these  to-morrows  passed, 
after  which  they  showed  an  English 
blue-book  with  his  own  invention  pub- 
lished in  it,  and  they  said,  ^Your 
invention  is  publisfied,  so  according 
to  the  law  of  Prussia  we  cannot  grant 
you  a  poienW  AU  the  time  they 
had  been  promising  to  grant  it. 
The  process  is  now  worked  very 
largely  in  Prussia." 

It  is  to  be  hoped  indeed  that  this 
was  an  extreme  case  in  the  working 
of  the  Prussian  system,  but  it  is  a 
well-known  fact  that  that  system  is 
utterly  arbitrary  both  as  to  end  and 


means,  which  is  to  say  that  it  is  nec- 
essarily and  essentially  a  failure. 

The  example  of  Prussia,  then, 
was  a  singularly  unhappy  and  in- 
applicable argument  against  the 
adoption  of  a  system  of  examination 
suited  to  a  free  country. 

As  to  the  failure  of  examining 
systems  in  France,  Augtria,  Sar- 
dinia, and  Belgium,  in  the  absence 
of  express  information  as  to  princi- 
ples and  details,  the  means  adopted 
for  carrying  them  out,  or  the  extent 
of  trial  given  them,  it  is  not  of  course 
possible  to  examine  into  the  causes 
of  failure,  but  it  would  doubtless  be 
found  in  the  existence  of  some  ar- 
bitrary features  in  either  -end  or 
mode. 

Returning  to  Mr.  Woodcroft's 
theory,  it  will  be  seen  that  he  is  not 
opposed  to  an  examining  system, 
but  to  our  system  of  examination  ip 
advance  of  the  grant ;  he  would 
grant  any  man  a  patent  for  any- 
thing, but  before  the  patentee  could 
exercise  any  rights  against  infringers 
of  his  patent,  the  latter  must  be  sub- 
mitted to  the  scrutiny  of  the  '■^most 
competent  men  of  the  duy."  If  an 
examination  is  to  be  made,  why 
should  it  not  be  in  advance  of  the 
grant,  so  that  the  deed  itself  may  be 
prima  facie  evidence  of  the  paten- 
tee's rights  ?  Why  should  one 
branch  of  the  government  indiscrim- 
inately grant  patents  for  another 
branch  to  scrutinize  before  the  pat- 
entees can  go  into  court,  or  can 
go  before  the  public  with  any  ascer- 
tained rights  ?  Why  postpone  lock- 


The  Examining  System  as  Viewed  from  Abroad. 


41 


ing  the  .stable  door  till  after  the 
horse  is  out  ? 

Curiously  enough,  ideas  somewhat 
similar  to  Mr.  Woodcroft's  have 
prevailed,  but  to  a  very  limited  ex- 
tent, in  this  country. 

It  has  been  proposed  to  continue 
an  examining  system,  and  if  the 
Office  refuses  a  patent  to  let  the  ap- 
plicant take  one  on  his  own  respon- 
sibility, the  patent  however  to  be 
accompanied  with  the  taint  of  offi- 
cial refusal. 

Of  what  earthly  use  would  such 
a  patent  be  to  the  holder,  who  would 
be  in  a  position  analogous  to  that  of 
the  man  who  bases  his  ownership  to 
real  estate  on  a  deed  either  invalid 
on  its  face,  or  bearing  such  a  taint 
that  it  is  worthless  ? 

Argument  against  the  American 
system  was  also  found  in  an  article 
coming  at  secondhand  from  the 
columns  of  the  "Kew  York  Trib- 
une," quoted  in  other  papers,  both 
here  and  abroad. 

This  was  the  article  to  which  we 
have  had  occasion  to  refer  in  an 
earlier  part  of  this  treatise  as  show- 
ing such  an  entire  and  singular 
misapprehension  of  the  true  prin- 
ciples of  oiu:  system.  The  article 
animadverts  upon  the  dangerous 
power  exercised  by  our  officials  in 
pronouncing  upon  the  novelty  and 
VALUE  of  inventions; — "Power," 
says  the  article,  "which  the  best 
functionaries  might  abuse  through 
defect  of  information,  or  error  in 
judgment,  which  the  worst  certainly 
will  and  do  use  most  unrighteously. ' ' 


That  the  law  does  not  authorize 
inquiry  into  the  value  of  inventions, 
we  have  shown,  and  as  to  the  in- 
quiry into  novelty,  is  not  the  exer- 
cise of  power  in  this  respect  suffici- 
ently prevented,  by  the  very  nature 
of  the  inquiry,  by  the  rights  of  the 
applicant  to  full  information  as  to 
any  cause  of  rejection,  and  by  his 
right  of  appeal,  from  being  improp- 
erly and  unjustly  exercised  ? 

What  must  have  been  the  sur- 
prise of  those  Englishmen  who  so 
keenly  appreciated  the  evils  of  their 
patent  system  that  they  desired  any 
mode  of  getting  rid  of  it,  even  by 
the  total  abolition  of  patents,  if  no 
other  way  could  be  devised,  to  find 
this  article  gravely  arguing  that 
"  our  patent  laws  should  be  assim- 
ilated to  the  British ;  that  the  Pat- 
ent Office  should  here,  as  there, 
simply  register  claims  to  have  made 
inventions  or  discoveries  in  their 
order,  and  all  questions  thence  aris- 
ing should  be  taken  to  the  courts 
and  there  settled." 

Such  a  proposition  as  this  must 
have  given  rise  to  the  thought  that 
the  American  examining  system 
must  he  bad  indeed,  if  it  warrants 
the  presenting  to  American  in- 
ventors of  this  alternative  as  pref- 
erable. 

The  delightful  results  as  they 
have  been  experienced  in  England, 
of  treating  property  in  invention  as 
a  bone  to  be  carried  off  in  triumph 
by  the  lucky  winner  among  those 
who  choose  to  fight  for  it,  may  be 
gathered  from  the  testimony  of  Mr. 


42 


The  Examining  System  as  Viewed  from  Abroad. 


Nasmyth,  the  well-known  inventor 
of  the  steam-hammer.  "He  had 
been  called  as  a  witness  in  patent 
cases,  and  had  seen  much  of  the  ad- 
vantages and  disadvantages  of  pat- 
ent litigation.  He  thought  there 
was  a  natural  tendency  to  partisan- 
ship among  scientific  witnesses,  and 
had  felt  this  tendency  to  become  an 
advocate  rather  than  a  witness. 
His  steam  hammer  had  been  in- 
fringed, but  he  took  a  commercial 
view  of  the  matter.  He  had  seen 
so  much  of  the  enormous  expense  of 
litigation  that  he  had  always  resolved 
to  submit  to  any  infringement  rather 
than  fight  a  battle  at  law.'''' 

Mr.  Webster,  a  prominent  barris- 
ter, characterized  patent  litigation 
as  "  nothing  but  sjieculations  on  the 
part  of  the  litigants  on  the  ignorance 
of  the  judge  and  jury  ;  a  jury  is  often 
very  ignorant,  and  a  judge  more  ig- 
norant than  all  of  them." 

Other  prominent  and  experienced 
men  testified  to  like  effect. 

When  we  take  Into  consideration 
the  ambiguous  character  of  many 
English  patents,  and  the  absence  of 
definite  claims,  the  ignorance  of 
judges  and  juries  is  not  much  to  be 
wondered  at.  In  this  country,  how- 
ever, a  well-defined  claim  is  de- 
manded before  the  patent  can  issue; 
and  in  litigated  cases  the  matters 
to  be  adjudicated  on  come  before 
the  courts  in  such  a  shape  that  the 
judges,  assisted  by  intelUgent  wit- 
nesses, are  very  rarely  at  a  loss  to 
rmderstand  the  invention. 

Patent  litigation  in  this  country 


is  not  so  costly,  nor  so  unsatisfac- 
tory, as  in  England,  and  this  fex;t 
may  be  very  largely  attributed  to  the 
effect  of  our  examining  system,  in 
reducing  and  simplifying  the  ques- 
tions coming  before  the  courts.  But 
evils,  like  in  kind  if  not  in  degree, 
attend  such  litigation  here,  neces- 
sary evils  where  judges  are  called 
amidst  other  duties  to  deal  with  a  va- 
riety of  mechanical  subjects,  of  which 
it  is  not  to  be  expected  that  they 
have  personal  knowledge,  so  that 
they  must  arrive  at  their  conclusions 
by  such  Ught  as  the  adverse  argu- 
ment of  counsel  and  testimony  of 
experts  may  throw  on  the  matter. 

There  is,  perhaps,  more  patent 
litigation  in  this  country  than  in 
England,  as  there  are  also  very 
many  more  patents,  the  annual 
number  of  patents  granted  being 
not  less  than  five  times  more  nu- 
merous. But  it  may  be  gathered 
from  the  testimony  of  Mr.  Xasmyth 
and  of  others,  tliat  in  England  pat- 
ent litigation  is  governed  not  at  all 
by  the  number  of  patents,  but  by 
the  wealth  and  courage  of  patentees. 
There  is  likely  to  be  little  litigation 
when  it  is  so  expensive  as  to  task 
the  purse  of  a  rich  man,  and  so  un- 
certain that  both  poor  and  rich  are 
likely  to  prefer  quiet  submission  to 
injustice  rather  than  resort  to  the 
courts.  It  is  the  characteristic  of  the 
English  patent  system,  to  the  known 
evils  of  which  the  sage  newspaper 
article  we  have  quoted  would  have 
us  flee  from  the  imaginary  e^^ls  of 
our  own,  that  in  leaving  the  validity 


The  Examining  System  as  Viewed  from  Abroad. 


43 


of  a  patent,  as  a  title-deed,  an  open 
question  upon  which  litigation  alone 
can  throw  any  light,  it  makes  litiga- 
tion so  terrible  an  ordeal,  that  soon- 
er than  invite  it,  most  ordinar}^ 
mortals  would  be  content  to  have 
their  rights  remain  forever  unde- 
fined and  uurespected. 

We  fancy  the  most  inveterate  and 
unreasonable  grumblers  would  re- 
gard an  exchange  of  our  own  for 
this  system  as  a  jump  out  of  the  fry- 
ing-pan into  the  fire. 

Patent  litigation  must  always, 
from  the  very  nature  of  the  subject, 
be  costly  ;  the  least  that  can  be  done 
then,  in  justice  to  inventors,  is  to 
insure  that  they  may  enter  upon  it, 
when  necessary,  with  a  tolerable  de- 
gree of  confidence  and  certainty,  that 
they  have  something  to  stand  upon. 

One  of  the  remedies  proposed  by 
those  who  understand  the  subject 
best,  for  the  present  state  of  patent 
projierty  in  England,  is  the  estab- 
lishment of  special  tribunals  for  the 
trial  of  patent  causes,  in  which  the 
judges  shall  have  the  assistance  of 
impartial  ex^^erts  uj)on  practical  sub- 
jects. This,  perhaps,  is  something 
wliich  might  be  considered  to  ad- 
vantage here.  It  certainly  holds 
out  the  prospect  of  giving  patentees 
the  benefit  of  the  most  intelligent 
and  satisfactory  adjudication  of  their 
rights. 

But  this  is  only  a  secondary 
matter.  Among  inventors  and  their 
advisers  thei'e  must  be  many  who 
will  be  disposed,  in  di'awing  up  de- 
scriptions and  claims,  to  adopt  the 


maxim  that  "language  was  made 
for  the  concealment  of  thought," 
and  this  tendency  mast  be  aggra- 
vated if  patents  are  so  loosely 
granted,  and  there  is  such  uncer- 
tainty and  risk  attending  them  as 
to  lead  to  a  general  impression  that 
vagueness  and  generality  of  language 
may  be  of  service  in  furnishing  some 
ground,  however  small,  to  stand 
upon.  In  this  way  patents  become 
an  abomination  and  a  snare,  both 
to  inventors  and  to  the  public. 

Such  has  been  the  experience  in 
England ;  the  result  of  allowing 
patents  to  issue  without  proper  ex- 
amination, without  ascertaining  whe- 
tJier  the  specifications  and  claims 
he  clear,  precise,  and  well  defined,  is 
thus  graphically  stated  by  Mr. 
Aston:  "Patentees  complain  that 
they  have  not  sufficient  protection 
for  their  property,  and  the  public 
complain  that  they  cannot  defend 
themselves  from  the  patent.  There 
are  some  intelligent  patent  agents ; 
there  are  also  some  who  are  not  so. 
It  is  very  commonly  the  case  that 
an  uninformed  man  goes  with  his 
invention  to  an  uninformed  patent 
agent  for  assistance ;  the  patentee  in 
the  latter  case  is  frequently  tempted 
to  put  in  a  very  wide  claim,  or  one 
capable  of  a  very  wide  interpretation. 
He,  therefore,  does  not  as  a  rule  find 
out  the  real  value  of  his  title-deed 
till  he  goes  into  court  with  it ;  there, 
for  the  first  time,  it  undergoes  strict 
examination  hy  the  judge  on  the  bench, 
which  is  an  ordeal  ichidi  very  few 
specifications  can  stontZ." 


u 


The  Examining  System  a.i  Vieived  from  Abroad. 


All  this  gives  point  to  what  we 
have  said  in  the  preceding  chapter 
as  to  the  important  beneficial  efiects 
of  our  previous  examination  in  com- 
pelling clearness  and  precision  in 
the  drawing  of  specifications  and 
claims. 

To  overcome  these  evils,  Mr. 
Aston  suggested  that  there  should 
he  an  official  examination  of  the 
docimient  which  constitutes  the  title- 
deed  ;  he  thought  that  the  examiner 
should  be  a  lawyer,  assisted  by  j)er- 
sons  with  technical  knowledge. 

Mr.  Webster,  an  eminent  Queen's 
counsel,  says,  alluding  to  the  duties 
which  the  law  officers  of  the  Crown 
under  the  present  sj'stem,  are  called 
upon  to  perform  :  ' '  The  law  officers 
do  not  obtain  a  sufficient  description 
of  the  nature  of  inventions  in  prac- 
tice ;  they  are  not  competent  to  deal 
with  such  subjects ;  they  cannot  give 
the  requisite  time,  and  they  know 
nothing  about  mechanical  details. 
A  law  officer  is  the  very  worst  per- 
son to  discharge  the  duties  for  which 
he  is  appointed."  The  act  "of  1852 
made  it  optional  whether  they  should 
call  in  scientific  aid,  but  generally 
he  believed,  they  call  in  no  such  aid. 
Every  application  for  a  patent  should 
be  examined  by  some  one  competent 
person  who  thoroughly  understands 
the  subject  of  the  patent.  If  an  in- 
vention had  been  patented  before, 
the  applicant  for  the  patent  should 
be  informed  of  it. 

In  a  Parliamentary  debate  on  the 
subject,  Mr.  Carr,  M.  P.,  said,  "his 
impression  was  that  at  the  root  of  all 


the  mischief  of  the  present  patent 
law  lay  the  want  of  a  projjer  tribunal, 
the  members  of  which,  combining 
legal  and  special  knowledge,  should 
refuse  patents  which  ought  to  be  re- 
fused.''^ 

Another  member  of  Parliament 
stated  his  belief  that  "if  the  patent 
laws  were  to  be  maintained,  it  was 
necessary  that  there  should  be,  in 
the  fii^st  place,  an  examination  to 
ascertain  that  the  invention  was  new, 
that  it  was  sufficiently  described,  and 
that  it  was  useful.'''' 

Still  another  well-known  Queen's 
counsel,  Mr.  Grove,  stated  that  "he 
was  in  favor  of  the  establishment  of 
a  special  patent  tribunal  armed  with 
the  power  of  granting  or  refusing 
patents  on  the  ground  that  they  are 
or  are  not  for  novel  inventions." 

Other  important  evidence  to  like 
effect  might  be  cited,  but  we  have 
given  enough  to  show  that  among 
those  leaiTied  and  experienced  Eng- 
lishmen who  have  given  their  atten- 
tion to  patent  law  reform,  there  is  a 
singular  unanimity  in  the  belief  that 
discrimination  in  the  grant  of  pat- 
ents is  of  vital  necessity,  and  it  may 
he  noted  that  those  are  the  most  ur- 
gent in  advancing  this  theory  who 
have  had  opportunity  for  practical 
observation  of  the  exercising  of  such 
discrimination  in  our  own  country. 

We  see  the  evils  of  the  want  of 
such  discrimination  forcibly  repre- 
sented :  patents  granted  with  vague 
and  indefinite  specifications  and 
claims ;  patents  for  old  or  for  use- 
less things,  and  for  things  already 


Tlie  Examining  Systevi  an  Viewed  from  Abroad. 


45 


patertted ;  patentees  left  to  ascer- 
tain in  the  courts  the  nature  and 
extent  of  their  rights,  and  j-et  afraid 
to  resort  to  the  courts,  so  that  both 
patentees  and  public  are  left  in  doubt 
and  perplexity  as  to  Avhat  the  major- 
ity of  patents  ai-e  for,  whether  they 
cover  much  ground  or  little,  whether 
they  are  valid  or  worthless. 

Surely  such  a  state  of  affairs  as 
this  is  infinitely  worse  and  more  un- 
bearable than  any  evils  which  have 
been  or  can  be  engendered  by  our 
examining  system. 

One  of  the  most  prominent  objec- 
tions advanced  in  England  to  the 
adoption  of  an  examining  system 
analogous  to  our  own  is  the  demand 
which  the  system  is  supposed  to  re- 
quire for  highly  scientific  officers,  and 
the  supposition  prevails  here  to 
some  extent  that  the  officers  of  our 
own  Patent  Office  are  or  should  be 
highly  scientific  men,  and  not  unfre- 
quently  positions  in  that  Bureau  are 
sought  on  the  strength  of  no  other 
qualification  than  an  assumption  of 
philosophical  knowledge  acquired 
by  cramming  at  our  schools  and 
colleges. 

We  cannot  conceive  a  more  disas- 
trous event  than  the  filling  of  our 
Patent  Office  with  quasi  philoso- 
phers. 

Forty-nine  fiftieths  of  all  the  ap- 
plications for  patents  are  based  on 
absolute  facts,  to  be  best  dealt  with 
practically  by  matter-of-fact  men, 
who  can  bring  to  bear  good  general 
and  practical  knowledge,  and  pow- 
ers of  discriminatiou  and  concentra- 


tion, "without  being  biased  by  pet 
theories  of  their  own. 

Purely  theoretical  knowledge  ac- 
quired apart  from  practice  is  treach- 
erous, and  standing  alone  is  but 
poor  capital  for  an  officer  of  the  Pat- 
ent Office.  There  have  not  been 
wanting  instances  of  theoretical  ex- 
aminers declaring  machines  and  ap- 
paratus to  be  inoperative  and  im- 
practicable which  have  been  shown 
to  be  in  every-day  successful  opera- 
tion. Whatever  science  or  skill  may 
have  been  exercised  in  the  produc- 
tion of  an  invention,  the  application 
for  a  patent  goes  before  the  Office, 
or  rather  should  do,  in  a  dry  matter- 
of-fact  condition,  and  may  be  better 
examined  by  a  man  of  shrewdness, 
tact,  and  practical  knowledge,  than 
by  one  who  can  only  bring  theoreti- 
cal lore  to  bear  on  the  duty.  Few 
theorists  think  alike,  and  their  ef- 
forts to  elucidate  a  simple  subject 
often  result  in  confusing  it,  precisely 
as  scientific  experts  in  poisoning 
cases,  and  in  not  a  few  patent 
cases,  by  their  opposite  views,  fre- 
quently succeed  in  confusing  judges 
and  juries,  and  in  obscuring  the 
truth. 

There  are  classes  oi  inventions 
which  demand  from  the  Examiner 
a  degree  of  scientific  knowledge,  but 
the  more  practical  experience  this 
knowledge  may  l)e  combined  with 
the  better  will  the  duties  be  per- 
formed. 

We  cannot  but  think  that  the 
alarm  in  England  concerning  the  dif- 
ficulty of  obtaining  efficient  officers 


46 


Remedies  for  Defective  Patents 


wherewith  to  carry  out  an  examin- 
ing system  is  a  false  alarm. 

To  say  that  an  examining  sys- 
tem gives  discretion  to  officials, 
which  good  ones  may  abuse  through 
error  or  mistake  of  judgment,  and 
which  bad  ones  will  abuse  delib- 
erately, is  merely  to  say  what  is 
equally  true  of  any  system  of  legal 
administration  depending  to  any 
extent  upon  the  discretion  of  man. 
If  we  are  to  abolish  any  system 
in  which  official  discretion  is  ex- 
ercised, because  good  men  are  not 
infallible  and  bad  men  will  do  mis- 
chief, what  branch  of  government 
can  we  permit  to  survive?  To 
apply  such  an  argument  to  the 
examining  system  is  to  say  that  a 
system  proper  in  its  theory  and 
beneficial  in  its  aim  is  bad  for  the 
want  of  capable  and  honest  men  to 
carry  it  out,  an  argument  to  which 
we  think  few  of  our  readers  will  be 
Avilling  to  subscribe. 

We  have  shown  that  the  discre- 
tionary power  which  the  examin- 
ing system  does  confer  on  those  who 
carry  it  out,  is  so  limited  and  well- 
defined  that  if  placed  in  the  hands 
that  the  law  intended  it  should  be, 
the  chances  of  injurious  abuses  of  it 
are  small  indeed. 

We  have  shown  how  beneficial 
the  system  has  been,  even  admitting 
it  to  have  been  but  imperfectly  ad- 
ministered, how  grossly  its  defects 
have  been,  from  natural  causes,  ex- 
aggerated, wherein  the  real  defects 
lay,  and  what  kind  of  changes  will 
be  likely  to  remove  those  defects. 


We  have  brought  proof,  too,  of 
the  evils  ensuing  from  the  lack  of 
such  a  system. 

We  believe  that  our  readers,  can- 
didly weighing  all  sides  of  the  ques- 
tion, will  coincide  with  us  in  the 
belief  that  the  examining  system 
whatever  may  have  been  the  defects 
of  administration,  has  been,  upon 
the  whole,  of  incalculable  benefit 
both  to  inventors  and  the  public, 
that  its  abolition  would  be  a  great 
misfortune,  a  signal  for  the  reduc- 
tion of  patent  property  to  a  state 
of  confusion,  and  that  earnest  en- 
deavors to  improve  the  organiza- 
tion of  the  Patent  Office,  in  those 
respects  wherein  it  very  evidently 
may  be  improved,  will  do  much  to 
make  the  system  as  successful  in 
practice  as  it  is  beneficent  and  just 
in  theory. 

CHAPTEE  X. 

REMEDIES    FOR    DEFECTTVIE 
PATEXTS. 

Having  in  the  preceding  chapters 
discussed  as  fully  as  our  proposed 
limits  will  allow,  the  examining  sys- 
tem, peculiar  in  its  character  and 
intent  to  our  law,  we  will  now  turn 
attention  to  other  provisions,  which 
will  be  found  to  be  equall}-  endued 
with  the  spirit  of  justice  and  liber- 
ality to  inventors. 

With  a  patent  granted  to  him 
after  an  inquiry  into  the  novelty 
and  utility  of  the  invention  claimed, 
the  patentee  may  come  before  the 
public  with  a  reasonable  confidence 
that  his  title-deed  is  clear  and  dis- 


Remedies  for  Defective  Patents. 


4T 


tinct,  and  should  infringements 
upon  his  patent  oblige  him  to  resort 
to  a  court  of  justice,  he  will  in  doing 
so,  have  the  legal  and  moral  benefit 
of  a  pritnd  facie  presumption  of 
the  validity  of  the  right  he  seeks  to 
vindicate. 

Inventors  have  at  times  erro- 
neously supposed  that  the  grant  of 
a  patent  after  the  examination  as  to 
novelty  and  utility  is  conclusive 
upon  those  questions,  and  that  a 
patent  is  a  guamntee  of  the  novelty 
and  utility  of  the  invention  claimed 
therein.  This,  of  course,  is  a  mis- 
take. An  application  for  a  patent 
is  an  ex  parte  proceeding,  of  which 
the  public  at  large  know  nothing. 
That  this  should  be  so,  is  essential 
for  the  protection  of  the  interests  of 
inventors.  If  before  the  grant  of  a 
patent,  the  particulars  of  any  claim 
of  invention  should  be  allowed  to 
become  matter  of  pul:)lic  notorie- 
ty, very  mischievous  consequences 
would  be  likely  to  follow. 

There  are  never  wanting  unscru- 
pulous and  narrow-minded  men,  who 
if  allowed  the  opportunity  would 
exercise  all  means  in  their  power 
to  impede  and  harass  inventors  and 
hinder  them  from  attaining  their 
rights.  To  publish  applications  for 
patents  would  be  to  invite  conspir- 
acy and  factious  opposition  of  all 
kinds  from  interested  parties,  with 
results  injurious  not  only  to  in- 
ventors, but  to  the  peace  and  morals 
of  society. 

It  is  requisite,  therefore,  to  pro- 
vide that  no    claim  of  invention 


shall  be  published  prior  to  the  grant 
of  a  patent :  till  then  the  only 
parties  cognizant  of  the  claim  are, 
as  a  rule,  the  applicant  and  his  at- 
torney, if  he  have  one,  and  the 
Patent  Office. 

But  it  is  an  inviolable  maxim 
that  the  rigl^ts  of  individuals  can- 
not be  bound  by  proceedings  to 
which  the  individuals  affected  were 
not  a  party. 

Hence  the  members  of  the  public 
at  large  cannot  be  bound  by  those 
proceedings  in  the  Patent  Office  rela- 
tive to  applications  for  patents,  of 
which  the  law  does  not  permit  them 
to  know,  or  to  become  parties  therein. 
Any  member  of  the  public,  there- 
fore, is  at  Uberty  to  show  by  proper 
proof,  if  he  can,  in  legal  proceedings 
upon  a  patent,  that  the  invention 
claimed  therein  was  not  new  or 
original  with  the  patentee ;  that  it 
is  not  useful,  or  that  for  other  rea- 
son the  patent  should  not  have  been 
granted,  or  is  invalid. 

The  patent  is  prima, facie  evidence 
in  any  suit,  for  the  patentee,  this 
far  :  that  the  officials  authorized  by 
law  have  after  due  examination 
granted  the  patent,  as  for  a  new  and 
useful  invention,  which  the  patentee 
has  sworn  that  he  believes  to  be  his 
own,  and  which,  in  the  opinion  of 
these  officials,  he  has  clearly  and 
sufficiently  set  forth  and  claimed  in 
his  specification. 

But  it  may  very  well  be  that  the 
patentee  was  mistaken  in  his  belief 
that  the  invention  was  original  with 
himself,  or  that  he  may  have  taken 


48 


Remedies  for  Defective  Patents. 


a  false  oath,  and  it  may  also  be 
that  members  of  the  public  whose 
rights  the  patent  may  affect,  can  by 
facts  and  proof  which  were  not  be- 
fore the  Patent  Office,  show  that 
such  was  the  case,  or  that  the  in- 
vention is  not  useful,  -or  that  it  is 
not  so  clearly  and  sufficiently  de- 
scribed as  to  enable  those  skilled  in 
the  art  to  which  the  invention  ap- 
pertains, or  with  which  it  is  most 
nearly  connected,  to  make  use  of  it, 
from  the  information  which  the 
specification  conveys.  Any  of  these 
defences — as  well  as  others  which  it 
is  not  to  our  purpose  here  to  speak 
of,  since  they  are  fitter  subjects  for  a 
legal  than  for  a  practical  treatise — 
any  member  of  the  public  is  at  lib- 
erty to  make  in  a  suit  which  a 
patentee  may  bring  against  him  for 
infringement  of  the  patent.  The 
burden  is  upon  him,  however,  to  es- 
tablish any  of  such  defences  by  clear 
and  unmistakable  Pfoof,  in  order  to 
overcome  the  weight  of  the  prima 
fade  presumption  which  the  exist- 
ence of  a  patent  raises  in  favor  of 
the  holder. 

Mere  technical  defences  against 
patents  are  not  favored,  but  the 
courts  will  alwaj's  so  construe  sjie- 
cifications  and  claims  that  if  possi- 
ble the  patent  may  stand. 

While,  therefore,  a  patent  is  not 
to  be  taken  as  in  any  sense  a  guar- 
antee of  the  patentee's  rights,  but 
on  the  contrary,  any  member  of  the 
public  sued  for  alleged  infringement 
of  a  patent  is  at  full  liberty  to  show, 
if  he  can,  that  the  patent  should 


not  have  been  granted,  and  that 
therefore,  the  grant  of  it  conferred 
no  lawful  right  upon  the  patentee, 
the  latter  may  be  sure  that  he  will 
not  have  to  contend  against  hmtile 
judicial  criticism  which  would  give 
a  favorable  ear  to  those  technical 
pleas  to  which  dishonest  defend- 
ants will  be  likely  to  resort. 

But  though  the  tendency  of  our 
courts  is  to  deal  in  a  lilMjral  spirit 
with  the  rights  of  patentees,  this 
liberality  of  course  cannot  extend 
so  far  as  to  givp  effect  to  patents 
palpably  deficient  in  resjject  to  any 
of  the  legal  requirements.  Litiga- 
tion not  unfrequently  has  the  effect 
of  showing  the  patentee  that  his 
patent  is  defective  in  some  material 
particular ;  and  that,  therefore,  his 
right  under  it  is  not  such  as  a  court 
of  justice  can  maintain  and  enforce. 
If  this  defect  lie  in  total  lack  of 
novelty  or  utility  in  the  invention 
claimed,  it  is  of  course  beyond  rem- 
edy. But  it  may  be  that  the  defect 
consists  in  the  lack  of  one  of  these 
requisites  in  some  part  only  of  the 
thing  claimed,  or  merely  in  the  mode 
in  which  the  invention  is  descrited 
or  claimed.  In  its  literal  dealings 
with  the  rights  of  patentees,  whose 
patents  are  thus  only  partially  or 
technically  defective,  our  law  is  dis- 
tinguished from  that  of  any  other 
country. 

Under  the  English  law,  in  a  suit 
for  infringement  of  a  patent,  proof 
that  the  patent  includes  more  than 
was  new  and  original  with  the  pat- 
entee, is  altogether  fatal  to  the  suit. 


Remedies  for  Defective  Patents. 


49 


Our  statutes,  however,  provide 
(section  60)  that  if,  through  inad- 
vertence, accident,  or  mistake,  and 
without  any  wilful  default,  or  intent 
to  defraud,  or  mislead  the  public,  a 
patentee  shall  have  claimed  in  his 
specification  to  be  the  original  and 
first  inventor  or  discoverer  of  any 
material  or  substantial  part  of  the 
thing  patented,  of  which  he  was  not 
so,  he  or  his  legal  representative 
may  yet  maintain  suit  at  law  or  in 
equity  for  the  infrinyement  of  any  part 
thereof  which  teas  bond  fide  his  own, 
provided  it  shall  be  a  material  and 
substantial  part  of  the  thing  pat- 
ented, and  be  definitely  distin- 
guishable from  the  parts  claimed 
without  right,  notwithstanding  the 
specification  may  embrace  more  than 
that  of  which  tlie  patentee  was  the 
original  or  first  inventor  or  dis- 
coverer. 

It  will  be  noted  that  a  patent 
which  is  too  broad  cannot  under 
this  section  be  partially  effective, 
unless  upon  the  face  of  the  patent 
as  it  stands  the  old  and  the  new  mat- 
ter be  clearly  distinguishable  and 
separable,  and  the  new  matter  be  a 
material  and  substantial  part  of  the 
thing  patented.  If  the  old  and  new 
matter  are  not  thus  definitely  dis- 
tinguishable, the  patent  as  it  stands 
is  altogether  bad,  and  no  suit  can 
be  maintahied  upon  it ;  but  such  a 
state  of  aflkirs  is  not  fatal  to  the 
inventor's  right  :  he  may  remedy 
the  error  in  a  mode  which  we  shall 
allude  to  hereafter. 
The   provision  in  favor  of  pat- 


entees in  the  section  we  have  quoted 
is  very  properly  coupled  with  the 
condition  that  in  such  case  no  costs 
shall  be  recovered  in  the  suit,  unless 
the  proper  disclaimer  has  been  en- 
tered at  the  Patent  Office  before  the 
commencement  of  the  suit ;  nor  shall 
the  patentee  be  entitled  to  the  benefit 
of  the  section  if  he  shall  have  un- 
reasonably neglected  or  delayed  to 
enter  said  disclaimer. 

This  proviso  is  to  protect  the  pub- 
lic against  the  carelessness  or  bad 
faith  of  patentees,  who  might  wit- 
tingly mislead  and  deceive  the  pub- 
lic by  continuing  to  claim  that  which 
they  themselves  were  aware  they 
had  no  right  to  claim. 

It  is  the  right  of  the  pubUc  that 
no  patent  should  purport  to  grant 
to  the  patentee  more  than  he  is 
fairly  entitled  to.  The  true  extent 
of  his  right  should  distinctly  appear 
on  the  face  of  his  patent,  that  the 
public  may  be  informed  of  it. 

When,  therefore,  a  patentee  shall 
have  discovered  that  his  claims  in- 
clude more  than  that  of  which  he 
was  actual  first  inventor,  he  acts  in 
bad  faith  towards  the  public,  from 
whom  he  holds  his  patent,  if  he  de- 
lays to  rectify  the  error,  and  reduce 
his  claim  to  its  legitimate  extent ; 
and  much  more  does  he  act  in  bad 
faith  if,  with  such  knowledge,  he 
attempts  to  enforce  submission  to 
his  unjust  claim  by  proceedings  in 
the  courts. 

When,  therefore,  a  patentee  dis- 
covers tliat  his  patent  covers  more 
than  that  of  which  he  was  the  ac- 


50       Remedies  for  Defective  Patents — Disclaimers — Reissues. 


tual  first  inventor,  and  finds  that 
the  old  matter  is  definitely  distin- 
guishable and  separable  from  the 
new,  he  is  morally  bound  to  avail 
himself  without  delay  of  the  sec- 
tion of  the  law  which  permits  him  to 
remedy  such  an  error  by  filing  in  the 
Patent  Office  what  is  termed  a 

Disclaimer. 

This  is  a  statement  in  writing, 
signed  by  the  party  disclaiming, 
attested  by  one  or  more  witnesses, 
and  recorded  in  the  Patent  Office, 
making  disclaimer  of  such  parts  of 
the  thing  patented  as  the  party  in 
interest  shall  not  choose  to  claim  or 
hold  by  virtue  of  the  patent.  The 
right  to  file  a  disclaimer  is  not  con- 
fined to  the  patentee,  but  his  heirs 
or  his  assigns,  whether  of  the  whole 
or  of  a  sectional  interest  in  the  pat- 
ent, have  the  like  right.  Of  course, 
when  the  assignee  of  a  sectional  in- 
terest makes  such  a  disclaimer,  his 
interest  only  is  aflFected  by  it. 

But  it  is  not  every  patent  which 
is  too  broad  that  can  be  thus  cured. 
The  remedy  of  disclaimer  is  of  coiu-se 
applicable  only  to  cases-  where  the 
patent  specifies  and  claims  divisible 
features  of  invention.  The  part  re- 
tained and  the  part  disclaimed  must 
be  clearly  separable  and  distinguish- 
able, and  the  part  to  be  retained 
must  be  a  material  and  substantial  ; 
part  of  the  thing  originally  patented. 

When,  therefore,  the  patent  is  not 
thus   divisible,  when  the   original 
claim  is  not  of  such  cliaracter  as  to   i 
allow  of  a  correction  of  the  patentee's 


error  by  cutting  out  some  clearly 
separable  part,  the  removal  of  which 
will  yet  leave  in  the  patent  a  ma- 
terial and  substantial  paten ta])lc 
subject  of  claim,  the  remedy  of  dis- 
claimer cannot  be  resorted  to. 

Now  there  are  very  many  patents 
inadvertently  made  too  broad,  in 
which  the  character  of  the  inven- 
tion, or  of  the  description  or  claim, 
would  prevent  any  such  rectifica- 
tion of  the  patent  by  mere  excision. 
In  such  case  the  patentees  would  l^e 
without  remedy,  and  would  find 
themselves  deprived  of  all  right 
without  default  of  their  own,  —  a 
state  of  affairs  by  which  very  many 
really  meritorious  and  useful  inven- 
tors would  be  irreparably  injured. 

To  obviate  such  mischief  the  law 
has  provided  the  remedy  of 
Reissue. 

This  provision  is  one  which  has 
no  parallel  in  any  other  patent  law, 
and  is  one  of  those  really  beneficent 
measures  which  have  tended  to  make 
our  law  so  efiective,  because  so  just 
and  liberal. 

Section  53  of  the  act  provides, 
that  "whenever  any  patent  is  in- 
operative or  invalid,  by  reason  of  a 
defective  or  insufficient  specifica- 
tion, or  hy  reason  of  the  patentee 
claiming  as  his  own  invention  or  dis- 
covery more  than  he  had  a  right  to 
claim  as  neic,  if  the  error  has  arisen 
by  inadvertence,  accident,  or  mis- 
take, and  without  any  fraudulent  or 
deceptive  intention,  the  Commis- 
sioner shall,  on  the  surrender  of 
such  patent,  and  the  payment  of  the 


Remedies  for  Defective  Patents — Reissues. 


51 


duty  required  by  law,  cause  a  new 
patent  for  the  same  invention,  and 
in  accordance  with  the  corrected 
specifications,  to  be  issued  to  the 
patentee,  or  in  the  case  of  his  death, 
or  assignment  of  the  whole,  or  any 
undivided  part  of  the  original  patent 
to  his  executors,  administrators,  or 
assigns,  for  the  unexpired  jjart  of 
the  term  of  the  original  patent,  the 
surrender  of  which  shall  take  effect 
upon  the  issue  of  the  amended  pat- 
ent.'>' 

For  patents  which  are  too  broad 
the  remedy  of  reissue  is  applicable, 
when  the  defect  is  such  as  to  render 
the  original  patent  altogether  in- 
operative or  invalid,  because  the 
character  of  the  invention,  or  of  the 
description  and  claim  is  such  that 
there  is  no  material  or  substantial 
part  of  the  thing  patented,  which 
being  truly  and  justly  the  patentee's 
own,  is  clearly  separable  and  dis- 
tinguishable in  the  patent  as  it 
stands  from  that  which  is  not  the 
patentee's  own.  In  other  words, 
the  remedy  of  reissue  is  applicable 
when  that  of  disclaimer  is  not, 

A  patent  which  being  too  broad 
may  yet  be  remedied  by  disclaimer, 
is  not  in  its  original  condition  alto- 
gether inoperative  and  invalid,  but, 
as  we  have  seen,  is  by  the  terms  of 
the  law  valid,  for  all  tliat  which 
Ijeing  a  material  and  substantial 
part  of  the  thing  patented  is  truly 
and  justly  the  patentee's  own. 

Upon  such  a  patent,  and  for  the 
infringement  of  such  material  and 
substantial  part  thereof  as  is  bond 


fide  the  patentee's  own,  he  is  allowed 
to  maintain  a  suit,  because  such 
part  is  definitely  distinguishable  and 
divisible  in  the  patent  as  it  stands 
from  the  parts  claimed  without  right, 
which  latter  may,  therefore,  be  re- 
moved from  the  patent  by  simple 
excision. 

But  a  patent  which  being  too 
broad  must  be  remedied  by  surrender 
and  reissue,  is  inoperative  and  in- 
valid, and  no  suit  can  be  maintained 
upon  it,  because  the  old  and  new 
matter  cannot  be  separated  in  the 
description  and  claim  as  they  stand ; 
no  distinct  part  can  be  taken  away 
and  still  leave  a  material  and  sub- 
stantial part  of  the  thing  patented, 
definitely  distinguishable  from  the 
parts  claimed  without  right.  Divi- 
sion therefore  being  impossible,  and 
since  the  patent  as  it  stands,  not 
being  so  divisible  is  wholly  invalid, 
the  only  i-emedy  is  reconstruction 
of  the  description  and  claim,  and 
this  can  be  efiected  by  way  of  sur- 
render and  reissue. 

But  it  is  not  only  as  a  remedy  for 
patents,  which,  being  too  broad,  can- 
not be  cured  by  disclaimer,  that  re- 
issue is  available.  It  is,  in  fact,  a 
sort  of  universal  medicine — a  cure 
for  all  the  ills  that  specifications  and 
claims  are  heir  to.  The  section  we 
have  quoted  makes  the  remedy  of 
reissue  available  whenever,  through 
innocent  inadvertence,  accident,  or 
mistake,  a  defective  or  insufficient 
specification  renders  the  patent  in- 
operative or  invalid. 

The  importance  of  this  is  appar- 


52 


Remedies  for  Defective  Patents — Reissues. 


ent  when  it  is  remembered  that  the 
consideration  passing  from  the  in- 
ventor to  the  pul)lic,  for  which  a 
patent  is  granted,  is  the  making  and 
disclosure  of  an  invention.  The  word 
disclosvire  argues  a  full  and  candid 
imparting  of  all  the  knowledge  nec- 
essary to  enable  others  to  carry  the 
invention  into  effect  as  fully  and 
effectually  as  the  inventor  himself ; 
otherwise  he  has  not  given  the  con- 
sideration required  of  him,  and  there- 
fore his  patent  is  not  good.  Thus,  in 
the  words  of  our  law,  "the  inventor 
is  required  to  file  in  the  Patent 
Office  a  written  description  of  his 
invention,  and  of  the  manner  and 
process  of  making,  constructing, 
compounding,  and  using  the  same, 
in  such  clear,  full,  and  concise  and 
exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which 
it  appertains,  or  with  which  it  is 
most  nearly  cctnnected,  to  make, 
construct,  compound,  and  use  the 
same."  A  patent,  then,  is  not  valid 
if  essential  information  is  omitted, 
or  if  anything  be  so  scantily,  ob- 
scurely, or  unintelUgibly  stated  that 
the  whole  description  taken  together 
is  not  sufficient  to  guide  those  skilled 
in  the  art  to  a  correct  and  beneficial 
use  of  the  invention.  How  likely 
such  defects  are  to  exist  where  an 
uninformed  inventor  has  attempted 
to  draw  his  own  description,  or  has 
employed  an  incompetent  attorney 
to  do  it  for  him,  can  readily  be  ap- 
prehended. The  right  of  reissue 
enables  a  patentee  so  to  correct 
or  amplify  his  description  as  that 


it  shall  present  a  fair  and  faith- 
ful performance  of  his  contract  with 
the  public,  and  so  his  privilege  will 
be  saved  to  him. 

Still  another  end,  beneficial  to  in- 
ventors, is  served  by  the  power  of 
reissue. 

It  is  essential  to  the  faithful  per- 
formance by  the  inventor  of  his  part 
of  the  contract  between  the  puljlic 
and  himself  that  he  should  clearly 
and  candidly  state  what  it  is  that 
he  claims  to  be  his  invention,  so 
that  the  public  may  be  fully  advised, 
from  his  own  statement,  of  the  ex- 
tent of  his  right ;  or,  as  the  law  has 
it,  he  must  "particularly  point  out 
and  distinctly  claim  the  part,  im- 
provement, or  combination,  which 
he  claims  as  his  invention  or  dis- 
covery." 

What  is  tenned  the  specification 
comprises  the  description  and  this 
necessary  claim,  which  latter  is  to 
be  construed  with  reference  to  the 
description.  The  courts,  therefore, 
thus  construing  the  claim,  will  al- 
ways, if  possible,  give  it  meaning 
and  effect ;  and  meaning  and  effect 
the  very  fullest, — consistent  with 
the  patentee's  apparent  right, — that 
by  the  fight  which  the  description 
affords,  they  can  give  it.  For  not 
only  will  they  endeavor  so  to 
construe  the  patent  that  it  shall 
stand ;  but,  if  possible,  so  that  it 
shall  be  effective  to  protect  the 
whole  of  the  patentee's  apparent 
invention.  But,  in  doing  this, 
they  cannot  of  course  go  beyond 
what  appears  on   the  face  of  the 


Remedies  for  Defective  Patents — Reissues. 


53 


patent.  Their  liberality  must  be 
bounded  by  the  actual  contents  of 
the  specification.  By  a  liberal  con- 
struction of  the  whole  document 
together  they  can  give  definite  sig- 
nificance to  an  apparently  obscure 
claim,  or  give  wider  meaning  to  an 
apparently  limited  claim,  than  if  it 
were  taken  by  itself  its  mere  lan- 
guage would  imply.  But  they  can- 
not supply  omissions,  or  construe 
the  patent  to  cover  that  which  is 
not  directly  or  indirectly  claimed. 

Now  it  may  happen,  and  fre- 
quently does  happen,  that  an  inventor 
inadvertently  omits  such  reference 
in  his  description  or  claim  to  some 
material  and  substantial  part  of  his 
invention  as  would  warrant  a  judicial 
construction  of  his  patent  as  cover- 
ing that  part.  This  then  is  a  case 
where  the  patent,  by  reason  of  a  de- 
fective and  insufficient  specification, 
is  inoperative  to  give  an  exclusive 
right  to  the  actual  invention.  In 
such  event  the  patentee  may  sur- 
render his  patent  and  take  a  new,  or 
as  it  is  termed,  a  reissue  patent  upon 
an  amended  sjiecification,  which 
shall  distinctly  sjiecify  and  claim  the 
whole  of  the  actual  invention  shown^ 
but  not  claimed  in  the  original 
patent. 

Again  it  sometimes  happens  that 
one  patent  has  been  made  to  em- 
brace several  distinct  patentable  im- 
provements, each  of  which  might 
have  been  made  the  subject  of  a  dis- 
tinct patent,  and  it  may  become 
proper  and  desirable  thus  to  separate 
them.     For  this  the  law  provides 


that  the  Commissioner  may  in  his 
discretion  cause  several  patents  to  be 
issued  for  distinct  and  separate  parts 
of  the  thing  patented,  upon  de- 
mand of  the  applicant,  and  the  pay- 
ment of  the  required  fee  for  a  re- 
issue, for  each  of  such  reissued  let- 
ters-patent. 

It  is  carefully  to  be  borne  in  mind 
that  the  legitimate  object  of  a  reissue 
is  simply  to  correct  that  wherein  the 
original  patent  was  defective,  more 
fuUy  or  correctly  to  descrilie  or  claim 
the  whole  of  that  invention  which 
the  original  patent  should  have  de- 
scribed or  claimed.  The  words  of 
the  law  are  that  the  Commissioner 
shall,  on  the  surrender  of  a  patent, 
and  payment  of  the  required  duty, 
cause  a  new  patent  for  the  same  in- 
vention, and  in  accordance  with  the 
corrected  specifications,  to  be  issued; 
and  it  is  distinctly  provided  that  no 
new  matter  shall  be  introduced  into 
the  specification.  This  term,  new 
matter,  has  reference  not  to  mere 
langviage,  but  to  substance.  Such 
changes  or  amplifications  of  language 
may  he  made  as  are  necessary  to 
effect  the  legitimate  object,  the  cor- 
rection of  that  wherein  the  original 
patent  was  defective,  whether  in  de- 
scription, or  in  claim.  But  no  new 
or  changed  feature  of  invention  can 
be  introduced,  because  the  reissue 
patent  is  to  be  for  the  identical 
thing  which  constituted  the  actvxil 
invention  of  the  patentee  xchen  he 
applied  for  his  original  patent,  and 
for  which  that  patent  would  then 
have  been  granted  had  the  descrip- 


54 


Remedies  for  Defective  Patents — Reissues. 


tion  or  claim  not  been  defective  or 
insuflfiicient. 

The  nature  and  object  of  reissues 
have  been  greatly  misunderstood, 
and  what  is  intended  as  a  remedial 
measure  in  favor  of  the  rights  of 
inventors  was,  imtil  very  recently, 
oftentimes  perverted  into  a  means 
for  unlawfully  stretching  the  ap- 
parent scope  of  patents  beyond  the 
true  invention,  and  thus  imposing 
upon  and  injuring  the  public. 

This  was  effected,  sometimes  by 
basing  upon  such  rudimentary  traces 
of  important  principles  as  might 
be  found  in  a  patented  invention, 
broad  and  sweeping  claims  couched 
in  language  designed,  in  effect,  to 
cover  any  known  application  of  such 
principles  to  a  like  purpose,  and 
sometimes  by  a  deliberate  interpola- 
tion in  the  amended  siiecification  of 
new  matter  not  to  be  found  in  the 
original  patent  at  all. 

Under  careless  and  incompetent 
administrations  this  evil  practice 
grew,  until  it  had  assumed  alanning 
proportions.  No  sooner  did  a  patent 
for  some  really  useful  invention  be- 
come remunerative,  and  so  draw 
attention,  than  it  became  the  object 
of  the  greedy  and  unscrupulous  to 
find  some  old  patent  worthless  in 
itself,  and  purchasable  for  a  song, 
but  in  which  might  be  found  some 
rude  embrj-onic  ti"aces  of  the  princi- 
ples involved  in  the  valuable  patent. 
Then  a  reissue  was  obtained,  and 
all  the  ingenuity  of  language  was 
called  into  play  to  give  this  reissue 
the  apparent  effect  of  anticipating 


and  covering  whatever  was  valuable 
in  the  later  patent.  This  species  of 
reissue  became  a  weapon  wherewith 
to  embarrass  and  levy  blackmail 
upon  meritorious  patentees  and 
manufacturers,  and  either  to  cut  off 
or  compel  a  division  of  the  hard- 
earned  fruits  of  their  ingenuity,  or 
of  their  enterprise  and  invested 
capitaL 

This  had  the  effect  too  of  casting 
a  taint  of  suspicion  upon  reissues 
generally,  to  the  great  injury  of 
bond  fide  meritorious  inventors. 

It  was  found  necessary  to  cast 
some  restraints  upon  the  grant  of 
reissues,  so  as  to  put  a  stop  to  this 
mischievous  practice. 

Whereas,  therefore,  previous  to 
the  passage  of  the  last  act  (July, 
1870),  reissues  might  be  obtained  by 
the  assignees  of  patents  without 
any  reference  to  the  original  pat- 
entees whatever,  it  is  now  required 
by  Sec.  33,  that  though  patents  may 
be  reissued  to  assignees,  yet  the  ap- 
plication must  be  made,  and  the 
new  sijecification  sworn  to  bj'  the 
inventor  or  discoverer,  who  may 
reasonably  be  supposed  to  know 
best  what  his  own  actual  inven- 
tion was,  and  to  be  the  least  likely 
person  to  make  false  or  rash  rep- 
resentations in  regard  thereto, 
while  the  doubt  whether  the  pat- 
entee will  prove  a  complacent  tool, 
must  tend  greatly  to  check  and 
lessen  the  siieculation  which  for- 
merly traded  in  old  patents,  for  no 
better  purpose  than  the  obtaining 
of  brummagem  reissues.     This  pro- 


Remedies  for  Defective  Patents — Reissues. 


55 


vision,  however,  is  not  applicable  to 
patents  assigned  previous  to  July, 
1870.  This  requirement  of  the  law 
has  been  somewhat  complained  of, 
on  the  ground  that  it  places  as- 
signees of  patents  too  much  at  the 
mercy  of  patentees,  and  enables  the 
latter,  should  they  be  so  disposed, 
to  levy  blackmail  upon  those  who 
have  already  paid  them  for  the  prop- 
erty, the  title  to  which  it  may  be 
found  necessary  to  better  by  reissue. 
There  may  be  some  ground  for  this, 
but  the  apprehended  evil  seems  to 
be  one  which  the  exercise  of  proper 
discretion  and  care  will  prevent. 
More  caution  than  was  formerly  ex- 
ercised by  purchasers  of  patents 
will  certainly  be  required  under  the 
present  state  of  the  law  :  this,  how- 
ever, is  a  material  advantage,  for 
the  caution  required  of  purchasers 
must  necessarily  reflect  itself  in 
greater  caution  upon  the  part  ot 
patentees  in  the  mode  of  obtaining 
their  patents,  since  imperfect  patents 
will  be  found  less  available  com- 
mercially. 

The  same  causes  (the  creation  of  a 
spirit  of  inquiry  and  discrimination 
as  to  patents)  which  will  check  the 
trading  in  patents  for  mere  specula- 
tive purposes,  will  ultimately  sei-ve 
to  check,  to  some  extent,  at  least, 
the  practices  of  that  class  of  men, 
who,  under  too  lax  a  state  of  the 
law,  undeservedly  flourish,  and  who 
may  be  tenned  professional  pat- 
entees ;  men  who,  without  any  merit 
as  inventors,  find  in  small  patents 
a  ready  means  of  supplying  their 


pockets,  at  the  expense  of  the  pub- 
lic. While  it  would  be  impolitic 
and  wrong  to  make  any  distinctions 
as  regards  title  to  the  benefit  of 
the  patent  law,  between  inventions 
of  different  degrees  of  apparent  im- 
portance, it  is  both  poUtic  and 
right  to  establish  any  measures 
which  will  be  likely  to  raise  the 
general  standard  of  patents  in  point 
of  legal  value.  Tlus  is  not  more  to 
the  interests  of  the  public,  than  it 
is  to  the  true  interest  of  bmid  fide 
inventors.  Any  measure,  there- 
fore, which,  while  it  does  not  tend  to 
work  any  real  hardship  to  patentees 
or  patent  owners,  yet  tends  to  im- 
press upon  inventors  the  necessity 
in  their  own  interest  of  exercising 
circumspection  in  drawing  their 
specifications,  is  beneficial,  and  as 
such  a  measure  may  tliis  touching 
reissues  be  regarded. 

When  the  patent  has  been  as- 
signed, and  there  are  several  as- 
signees, they  must  all  be  assenting 
parties  to  an  application  for  a  re- 
issue. 

It  is  also  distinctly  specified  by 
the  letter  of  the  last  act  that  "no 
new  matter  shall  be  introduced  into 
the  specification ;  nor  in  case  of  a 
machine  patent  shall  the  model  or 
drawings  be  amended,  except  each 
by  the  other." 

This  proviso,  however,  is  added : 
"  But,  where  there  is  neither  model 
nor  drawing,  amendments  may  be 
made,  upon  proof  satisfactory  to  the 
Commissioner  that  such  new  mat- 
ter or  amendment  was  a  part  of  the 


56 


General  Features  of  the  U.  S.  Patent  Laws. 


original  invention,  and  was  omitted 
from  the  specification  by  inadver- 
tence, accident,  or  mistake,  as  afore- 
said." 

The  wisdom  of  this  last  provis- 
ion, or  of  the  admission  under  any 
circumstances  of  extrinsic  evidence 
in  applications  for  reissue,  may  be 
doubted.  Bond  fide  cases  for  the 
exercise  of  this  rather  sweeping  dis- 
cretion by  the  Commissioner,  must 
be  comparatively  very  rare,  and  the 
measure  might  seem  fairly  obnox- 
ious to  the  charge  of  extending 
temptation  for  much  misrepresenta- 
tion and  imposition,  without  the 
likelihood  of  working  any  very  ma- 
terial measure  of  justice. 

As  a  further  necessary  check  upon 
the  grant  of  reissues,  the  law  re- 
quires that  applications  therefor 
shall  be  subject  to  revision  and  re- 
striction, in  the  same  manner  as 
original  applications  are. 

As  the  surrender  of  an  original 
patent  does  not  take  effect  until  the 
issue  of  the  amended  patent,  If  ap- 
pUcation  for  the  latter  be  refused 
and  withdrawn,  the  original  remains 
in  force. 

It  is  provided  that  a  reissue 
patent,  with  its  corrected  specifica- 
tion, shall  have  the  effect  and  ope- 
ration in  law,  on  the  trial  of  all 
actions  for  causes  tliereafter  arising, 
as  though  the  same  had  been  origi- 
nally filed  in  such  corrected  form. 
Of  causes  of  action  under  the  origi- 
nal patent,  the  surrender  and  reis- 
sue, since  it  involves  a  distinct 
avowal  by  the  patentee  that  such 


original  patent  was  inoperative  and 
invalid,  is  of  course  an  abandon- 
ment. 

CHAPTEB  XI. 

GENERAL  FEATURES  OF  THE 
UNITED  STATES  PATENT  LAWS. 

In  this,  our  concluding  chapter, 
we  shall  refer  briefly  to  those  pro- 
visions of  our  patent  law  which  in 
the  preceding  chapter  have  escaped 
notice. 

It  is,  perhaps,  one  of  the  most 
striking  illustrations  of  the  differ- 
ence in  spirit  and  principle  Ijetween 
our  patent  law  and  that  of  Eng- 
land, that  whereas  in  the  latter  the 
patentee's  right  rests  ujwn  his  Ijeing 
first  to  disclose  the  invention  to  the 
pubUc  by  his  patent,  with  us  the 
question  of  right  is  determined  by 
reference  to  the  date  of  invention. 
The  inquiry  is,  who  first  made,  not 
who  first  disclosed  to  the  public, 
an  invention  which  may  be  in  dis- 
pute. 

Under  our  law  an  inventor  does 
not  lose  his  rights  merely  by  public 
use  or  sale  of  his  invention  during 
a  period  not  exceeding  tree  years  prior 
to  his  application  for  a  patent.  It 
may  be  questioned,  perhaps,  whether 
this  two  years  grace  be  not  too  great 
a  stretch  of  liberality ;  certainly, 
however,  it  allows  time,  which  in 
most  cases  would  be  ample  either 
for  ascertaining  practically  the  posi- 
tive and  relative  utility  of  an  idea, 
'or  for  obtaining  that  pecuniary  aid 
which  a  poor  inventor  may  need  for 


General  Features  of  the  U.  S.  Patent  Laws — Caveats. 


57 


tlie  bringing  of  his  invention  into 
use. 

Time  taken  in  conducting  experi- 
ments witli  an  invention  is  attended 
with  the  risk  that  tlie  invention  niay 
be  made  by  some  other  person  in  tlie 
meantime,  or  that  the  idea  may 
come  to  the  knowledge  of  some  un- 
scrupulous party,  who  will  not  hesi- 
tate to  appropriate  and  patent  as 
his  own,  the  original  conception  of 
another,  if  it  seem  likely  to  prove  at 
all  valuable.  As  applications  for 
patent  are  secret  ex  parte  transac- 
tions, such  theft  might  be  consum- 
mated without  the  knowledge  of  the 
true  inventor,  until  on  applying 
for  his  patent,  he  should  find  an- 
other party  already  in  possession  of 
a  patent  wrongfully  obtained.  This 
probability,  were  there  no  check  upon 
it,  would  prevent,  by  making  too 
hazardous,  that  expenditure  of  time, 
money,  and  skill,  Avhich  is  necessary 
to  reduce  many  original  inventions 
to  the  best  practical  shape,  and 
would  compel  the  premature  patent- 
ing of  lialf-hatched  ideas.  This 
danger  the  law  cannot  entirely 
obviate,  but  it  has  jirovided  some 
measure  of  protection  to  inventors 
during  the  time  which  may  be  re- 
quired by  them  for  conducting  ex- 
periments to  nmture  their  ideas. 

Section  40  of  the  act  provides  that 
any  citizen  of  the  United  States  who 
has  made  a  new  invention  or  dis- 
covery, and  desires  further  time  to 
mature  the  same,  may  file  a  caveat 
in  the  secret  archives  of  the  Patent 
Office. 


Caveats 
Are  simply  brief  descriptions  set- 
ting forth  the  design  of  an  invention 
and  its  distinguishing  characteris- 
tics, accompanied  by  a  statement 
that  the  caveator  who  claims  the 
invention  as  his  own,  is  engaged  in 
taking  steps  to  jierfect  it,  prior  to 
applying  for  letters-patent.  This 
caveat  is  filed  in  the  secret  arcliives 
of  the  Office,  and  is  accessible  only 
to  the  officials  and  the  caveator,  or 
such  persons  as  he  may  duly  author- 
ize to  have  access  to  it.  As  a  caveat 
refers  to  an  avowedly  uncompleted 
invention,  while  letters-patent  are 
granted  only  for  one  which  is  com- 
jjlete,  no  proceedings  are  taken 
upon  a  caveat  by  the  Office,  but  it  re- 
mains for  the  caveator  to  mature  his 
invention  and  file  his  application  for 
a  patent  within  one  year ;  which 
time,  however,  may  be  extended 
from  year  to  year  by  renewing  the 
caveat.  It  is  common  to  allude  to 
caveats  as  affording  a  temporary 
security,  thus  leading  many  inven- 
tors to  a  mistaken  impression  that 
a  caveat  is  a  sort  of  temporary 
patent.  This  it  is  not ;  a  patent 
being  a  grant  of  the  exclusive  right 
for  a  certain  period  to  unake,  use^ 
and  sell  a  completed  invention,  is 
the  act  of  the  pubUc  in  consideration 
of  the  disclosure  of  such  completed 
invention.  A  caveat  is  merely 
the  caveator's  own  act  in  reference 
to  an  incomplete  invention  which  he 
desires  to  keep  secret  till  he  has  had 
time  to  mature  it,  in  order  that  he 
may  then  disclose  it  and  obtain  from 


58 


General  Features  of  the  U.  S.  Patent  Laws. 


the  public  the  exclusive  right  to 
make,  use,  and  sell  it.  A  caveat, 
therefore,  is,  as  its  name  implies,  sim- 
ply a  warning^  notifying  the  Patent 
Office  that  the  caveator  has  made 
an  invention,  which  he  intends  to 
mature  and  to  apply  for  a  patent 
therefor  wathin  one  year. 

The  effect  which  the  law  gives  to 
this  warning  is  to  make  it  obligatory 
upon  the  Patent  Office  during  one 
year  after  the  filing  or  the  renewal 
of  a  caveat,  to  grant  no  patent  for 
the  invention  to  any  other  claim- 
ant without  giving  the  caveator  op- 
portunity to  establish  his  priority  of 
right.  To  this  end,  notice  is  to  be 
given  to  the  caveator  of  the  filing  of 
any  interfering  application  for  a 
patent,  without,  however,  informing 
him  as  to  the  name  or  whereabouts 
of  the  applicant,  and  he  is  allowed  ' 
three  months  from  the  time  of  such 
notice  to  complete  his  invention  and 
file  his  application  for  a  patent.  If 
he  fail  to  do  this,  he  will  be  con- 
sidered to  have  waived  his  claim, 
and  that  of  the  other  applicant  will 
be  considered  and  passed  upon  with- 
out reference  to  the  caveat. 


Section  24  of  the  Patent  Act  pro- 
vides, that  any  i>erson  who  has  in- 
vented or  discovered  any  new  and 
useful  art,  machine,  manufacture, 
or  composition  of  matter,  or  any 
new  and  useful  improvement  there- 
of, not  known  qp  used  by  others  in 
this  country,  and  not  patented  or 
descinhed  in  any  printed  publication 
in  this  or  any  foreign  coimtry  before 


his  invention  or  discovery  thereof, 
and  not  in  public  use  or  on  sale  for 
more  than  two  years  prior  to  his  ap- 
plication, unless  the  same  is  proved 
to  have  been  abandoned,  may,  upon 
payment  of  the  duty  required  by 
law,  and  other  due  proceedings  had, 
obtain  a  patent  therefor. 

It  is  first  to  be  noticed  in  this  sec- 
tion that  the  term  "any  person" 
includes  citizens  and  aliens,  who  in 
reference  to  the  patent  laws  stand 
upon  precisely  the  same  footing. 

And  it  may  be  here  stated  that 
an  inventor,  whether  citizen  or  al- 
ien, who  may  have  previously  pat- 
ented his  invention  in  foreign  coun- 
tries, does  not  thereby  prejudice  his 
right  to  a  patent  here,  provided  tliat 
the  invention  has  not  been  intro- 
duced into  public  use — by  which  is 
meant  a  use  in  public — in  the  United 
States /or  more  tlmn  two  years  prior 
to  his  application  for  the  patent,  but 
his  patent  wiU  expire  at  the  same 
time  with  the  foreign  patent,  or  if 
there  are  several  foreign  patents, 
then  with  that  having  the  shortest 
term,  and  in  no  case  can  the  term 
of  a  United  States  patent  exceed 
seventeen  vears  from  its  date  (sec- 
tion 25). 

Kext  comes  the  recital  of  patent- 
able subject-matters,  and  then  the 
recital  of  conditions  essential  to  the 
obtaining  of  a  patent,  and  which  of 
course  therefore  are  essential  to  the 
maintenance  of  a  patent  which  may 
have  been  granted. 

These  conditions  are — 

1st.  That  the  thing  for  which  a 


Conditions  to  Patentability. 


59 


patent  is  sought  shall  not  have  been 
known  or  used  by  others  in  this 
country  before  the  invention  thereof 
by  the  claimant. 

The  mere  knowledge  or  use  of  the 
thing  in  a,  foreign  country  wnll  not, 
of  itself,  bar  or  invalidate  a  patent, 
and  proof  of  such  knowledge  or  use, 
except  it  be  in  the  nature  of  a 
jjdtent,  or  printed  inihlication,  is 
not  admissible  against  a  patent 
excepting  where  it  is  proposed,  by 
bringing  home  to  the  patentee  a 
knowledge  thereof,  to  show  that  his 
claim  of  invention  was  not  a  bond 
fjde  claim,  and  that  his  patent  was 
obtained  by  fraudulent  representa- 
tion. As  to  what  knowledge  or  use 
in  this  country  will  suffice  to  bar  or 
invalidate  a  patent,  the  rule  would 
seem  to  be  that  it  must  not  have 
been  an  entirely  secret  knowledge  or 
use,  but  open  so  far  as  to  argue  ac- 
cessibility by  the  public  :  beyond  this 
it  matters  not  how  limited  the  pi'ior 
knowledge  or  use  may  have  been. 

2d.  That  the  thing  for  which  a 
patent  is  sought  shall  not,  prior  to 
the  invenflon  thereof  by  the  appli- 
cant, have  hQen  patented  or  described 
in  any  printed  publication  in  this  or 
any  foreign  country. 

A  prior  patent  for,  or  printed 
publication  of,  a  similar  thing  is  the 
best  possible  evidence  of  want  of 
novelty  in  an  invention^  and  to  this 
end  Q.  foreign  patent  or  printed  pub- 
lication is  equally  effective  with  a 
domestic  one.  In  either  case  it  is  a 
record,  accessible  to  the  public,  of 
the  prior  existence  of  the  invention 


claimed  by  the  applicant  or  patentee 
as  original  with  himself.  But  to 
bar  an  application  or  invalidate  a 
patent,  a  prior  patent  or  printed 
publication,  whether  domestic  or 
foreign,  should  set  forth  the  inven- 
tion so  clearly  and  intelligibly,  as  to 
enable  a  competent  person  skilled  in 
that  branch  of  the  arts  to  which  the 
alleged  invention  may  appertain,  to 
make  or  use  it.  Mere  vague  sug- 
gestions of  something  similar  will 
not  suffice. 

In  the  absence,  then,  of  any  prior 
knowledge  or  use  in  this  country, 
and  of  any  patent  or  printed  publi- 
cation in  this  or  any  foreign  country, 
an  invention  is  new  in  the  eye  of  the 
law,  and  the  inventor  has  an  in- 
choate right  therein  which  he  may 
perfect  and  secure  by  a  patent. 

He  is  not  bound  to  apply  for  a 
patent  within  any  specified  time, 
nor  will  delay  to  do  so,  for  however 
long  a  time,  of  itself,  there  being  no 
other  claimant,  forfeit  his  right.  The 
Statute,  however,  points  out  two 
ways  in  which  the  right  may  be  lost : 

1.  By  public  use  or  sale  of  the 
invention  for  more  than  two  years 
prior  to  application  for  a  patent. 

Public  use  is  a  use,  not  hy  the 
public  necessarily,  but  any  use — 
though  it  may  be  only  limited — in 
public,  so  that  there  may  be  public 
knowledge  of  the  thing  for  more 
than  two  years. 

As  public  use  or  sale  for  less  than 
two  years  is  not  a  bar  to  a  patent, 
and  as  within  such  j^eriod  an  inven- 
tor might  have  made  his  invention 


60 


General  Features  of  the  U.  S.  Patent  Laws. 


a  source  of  profit  to  himself  by 
manufacture  and  sale,  or  by  allow- 
ing the  use  of  it  to  others,  it  would 
not  be  right  if  under  a  patent  sub- 
sequently obtained  he  could  disturb 
or  prohibit  the  further  use  of  the 
articles  thus  previously  sold  by  him, 
or  which  he  had  permitted  to  be 
made  and  used.  It  is  therefore  en- 
acted by  Section  37  that  every  per- 
son who  may  have  purchased  of  the 
inventor,  or  with  his  knowledge  and 
consent  may  have  constructed,  any 
newly  invented  or  discovered  ma- 
chine, or  other  patentable  article, 
prior  to  the  application  for  a  patent, 
or  sold  or  used  one  so  constructed, 
shall  have  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  thing 
so  made  or  purchased,  without  Ua- 
bility  therefor. 

The  terms  of  this  section  exclude 
from  its  benefit  those  who  may, 
prior  to  appUcation  for  patent,  have 
constructed  or  applied  the  invention, 
in  defiance  of  the  inventor's  right, 
or  without  his  assent  or  knowledge. 

2.  By  abandonment. 

An  invention  may  be  abandoned 
at  any  time  prior  to  application  for 
patent.  But  the  law  does  not  favor 
and  will  never  raise,  except  in  the 
case  of  public  use  or  sale  for  more 
than  two  years,  a  presumption  of 
the  abandonment  of  an  invention. 
Before  it  will  be  concluded  that  an 
invention  has  been  abandoned,  there 
must  be  some  clearly  proven  act  or 
expression  on  the  part  of  the  in- 
ventor, unmistakably  indicating  his 
intention  not  to  claim  any  exclusive 


right  in  the  invention,  but  to  allow 
it  to  become  public  projwrt}",  for  an 
invention  can  be  abandoned  only  to 
the  public  at  large. 

As  a  rule,  therefore,  a  valid  pat- 
ent may  be  obtained  for  any  im- 
provement which  has  not  been 
known  or  used  by  others  in  this 
country^  nor  been  patented  or  de- 
scribed in  any  printed  publication 
in  this  or  any  foreign  country  l^efore 
the  date  of  its  invention  or  dis- 
covery by  the  party  claiming  it  as 
his  own,  unless  be  has  allowed  it  to 
be  in  public  use  or  on  sale  for  more 
than  two  years  before  his  application 
for  a  patent,  or  has  at  any  time  be- 
fore such  application  by  a  voluntary 
and  delilierate  act  abandoned  it  to 
the  public. 

Should  the  claim  of  an  applicant 
for  a  patent  be  rejected,  or  should 
a  patent  granted  be  assailed  in  liti- 
gation, on  the  ground  of  a  prior 
foreign  patent  or  description  in  a 
foreign  printed  publication,  if  the 
applicant  or  patentee  can  estabUsh 
by  comjietent  proof  that  his  inven- 
tion preceded  the  date  of  such  prior 
foreign  patent  or  publication,  a  pat- 
ent will  be  granted  him  if  he  be  an 
applicant ;  or,  if  he  be  a  patentee, 
his  patent  will  be  sustained. 

And,  in  the  case  of  an  applicant 
for  a  patent,  ex  parte  evidence  in 
such  case  suflices  to  estabUsh  his 
priority  of  right. 

Such  evidence  is  also  competent 
to  overcome  the  rejection  of  a  claim 
for  a  patent  on  the  ground  of  de- 
scription in  a  printed  publication  in 


General  Features  of  the  U.  S.  Patent  Laws — Interferences.     61 


this  country,  or  a  rejection  on  the 
ground  that  the  invention  is  already 
in  pubUc  use  or  on  sale,  unless  it 
shall  appear  that  such  public  use  or 
sale  has  been  for  more  than  two 
3'ears  prior  to  the  application  for  a 
patent. 

But  if  application  for  a  patent 
l)e  made  for  something  already  pat- 
ented in  this  country,  or  which  an- 
other party  is  at  the  same  time 
seeking  to  patent  here,  it  may  be 
necessary  in  either  case  to  try  the 
question  of  priority  of  invention  in 
the  Office.  This  is  done  by  means 
of  what  is  termed  an  interference — 
a  judicial  proceeding  in  which  the 
rival  claimants  of  the  same  inven- 
tion are  allowed  to  present  testi- 
mony in  support  of  their  respective 
claims,  the  testimony  being  taken 
in  the  same  mode  as  in  a  cause  in 
equity,  and  each  party  having  the 
right  to  be  present  at  the  examina- 
tion of,  and  to  cross-examine,  his  op- 
ponent's witnesses.  This  departure 
from  the  general  rule,  which  makes 
applications  for  patents  altogether 
ex  parte  proceedings,  is  necessitated 
by  the  circumstances  of  the  case. 
The  Patent  Office  can  lawfully  grant 
a  patent  onlj^  to  the  true  and  first 
inventor,  and  can  lawfully  grant  a 
second  patent  for  the  same  thing 
only  to  him  who  shall  appear  to  be 
the  actual  true  and  first  inventor, 
and  therefore  to  have  a  claim  supe- 
rior to  that  of  the  first  patentee.  If, 
therefore,  there  be  before  the  Office 
at  the  same  time  two  or  more  par- 
ties, each  claiming  to  be  the  true 


and  first  inventor  of  the  same 
thing ;  or,  if  application  be  made 
for  a  patent  for  the  same  thing,  in 
which  another  party  already  has,  by 
patent  granted,  a  vested  exclusive 
right,  testimony  must  be  adduced 
and  proceedings  had  to  determine 
the  question  of  priority  of  inven- 
tion. To  these  proceedings  it  is 
absolutely  necessary  that  the  rival 
applicants  in  the  one  case,  or  the 
applicant  and  prior  patentee  in  the 
other,  should  both  be  made  parties  ; 
for  by  these  proceedings  their  re- 
spective rights  in  the  Patent  Office 
are  to  be  bound  ;  and  no  man's  rights 
are  to  be  bound  except  by  proceed- 
ings to  which  he  is  a  party. 

It  is  provided,  therefore,  by  Section 
42  of  the  Patent  Act,  that  "when- 
ever an  application  for  a  patent 
which,  in  the  opinion  of  the  Com- 
missioner, would  interfere  with  any 
pending  application,  or  with  any 
unexpired  patent,  he  shall  give  notice 
to  the  applicants,  or  applicant  and 
patentee,  as  the  case  may  be,  and 
shall  direct  the  primary  examiner 
to  proceed  to  determine  the  question 
of  priority  of  invention.  And  the 
Commissioner  may  issue  a  patent 
to  the  party  who  shall  be  adjudged 
the  prior  inventor." 

Some  years  ago,  the  proceedings 
in  interference  cases  were  very  loose 
and  unsatisfactory.  There  was  no 
mode  of  compelling  the  attendance 
of  necessary  witnesses ;  there  was 
no  system  or  order  as  to  the  time 
and  mode  of  taking  the  testimony, 
and  the  parties  were  left  to  develop 


62      General  Features  of  the  U.  S.  Patent  Laws — Interferences. 


by  such  evidence  as  they  could,  such 
a  case  as  they  might  choose.  Con- 
sequently, the  endeavor  of  each 
party  was  to  make  out  his  own  case, 
by  the  light  of  that  made  out  by 
his  opponent ;  and  there  was  every 
opportunity  and  temptation  to  the 
parties  to  adapt  their  proof  to  the 
emergencies  of  the  occasion,  rather 
than  to  the  true  facts  of  the  Case. 
It  can  hardly  be  doubted  that  the 
result  must  have  been  much  in- 
justice, and  not  a  little  false  swear- 
ing. 

Judicious  improvements,  how- 
ever, in  the  law,  and  in  the  rules 
and  regulations  of  the  Patent  Office, 
have,  by  assimilating  the  proceed- 
ings in  interference  cases  as  far  as 
possible  to  those  in  a  court  of  justice, 
given  them  a  fair  degree  of  the 
justice  and  certainty  attending  or- 
dinary judicial  proceedings. 

The  law  has  provided  for  securing 
the  attendance  of  necessary  wit- 
nesses by  subixena. 

The  rules  of  the  Office  have  pro- 
vided for  proper  system  in  the  taking 
of  testimony,  by  establishing  that  in 
all  cases  the  prior  patentee  or  ear- 
liest applicant  for  patent,  shall  be 
deemed  prima  facie  the  first  in- 
ventor, thus  putting  him  in  the  posi- 
tion of  a  quasi  defendant. 

The  later  applicant,  therefore,  or 
party  complainant,  must  first  take 
testimony  to  show  the  date  of  his 
invention,  for  which  purpose  a  cer- 
tain limit  of  time  is  allowed  him, 
after  which,  within  another  set 
period,  the  prior  patentee  or  appli- 


cant must  take  the  testimony  in 
support  of  his  claim,  and  after  the 
closing  of  all  such  direct  testimony 
both  parties  may  take  rebutting  tes- 
timony. 

This  right  of  rebuttal  in  both 
parties  is  necessary.  The  position 
of  rival  claimants  of  the  same  in- 
vention has  not  any  real  analogy 
to  that  of  complainant  and  defend- 
ant in  a  suit,  the  analog}-  made 
by  the  rules  of  the  Office  being  alto- 
gether artificial,  and  merely  for  the 
sake  of  convenience  and  order.  To 
such  cases  no  ordinary-  rules  of  plead- 
ing are  applicable.  Each  party  is, 
in  fact,  both  plaintiff  and  defend- 
ant; there  is,  therefore,  an  equal 
right,  as  there  may  be  an  equal 
necessity  in  each  party,  to  rebut  his 
opponent's  direct  testimony,  and  it 
is  convenient  and  orderly  that  all 
the  evidence  which  is  merely  re- 
buttal of  that  of  an  opponent,  shall 
be  separate  from  the  direct  testimony 
adduced  for  the  purpose  of  estabUsh- 
ing  a  party's  own  case. 

This  is  especially  necessary  in 
view  of  the  circumstances  in  which 
many  cases  of  interference  originate. 

"We  refer,  of  course,  to  those  cases 
of  frequent  occurrence  in  which 
there  has  been  some  contact  or  com- 
munication, direct  or  indirect,  be- 
tween the  respective  parties,  leading 
to  a  charge,  either  on  one  part,  or 
mutual,  of  theft  of  the  invention  in 
dispute. 

As  ordinary  rules  of  pleading  are 
inapplicable  to  interference  cases, 
and  no  such  previous  knowledge  and 


General  Features  of  the  U.  S.  Patent  Laws — Interferences.     63 


control  is,  therefore,  had  of  the  tes- 
timony to  be  adduced  as  those  rules 
aflbrd,  it  is  essential  to  both  parties 
to  have  the  like  right  to  rebut  if  they 
can,  before  the  close  of  the  evidence, 
such  points  as  may  be  first  raised 
in  the  opponent's  testimony. 

But  these  rules  would  not  of  them- 
selves suffice  to  secure  the  fair  trial 
and  adjudication  of  cases  of  inter- 
ference. Of  course  the  main  object 
of  each  party  to  an  interference,  is 
to  establish  a  date  of  invention 
earlier  than  that  proved  by  his  op- 
ponent ;  and  if,  as  under  the  old 
rules,  the  cases  to  be  proved  were 
left  entirely  in  the  dark  till  devel- 
oped by  the  evidence,  the  party 
taking  evidence  last  would  have  the 
opportunity,  which  he  might  not 
always  scorn  to  use,  to  adapt  his 
proof  to  the  emergencies  of  the 
case. 

For  a  pretty  effectual  method  of 
stopping  such  possible  sharp  prac- 
tice, the  public  is  indebted  to  the  late 
Commissioner  of  Patents,  Fisher, 
who  established  the  following  bene- 
ficial rule : 

Before  declaring  an  interference 
proper,  a  preliminary  interference 
will  be  declared,  in  which  each 
party,  without  being  informed  who 
the  interfering  claimant  is,  will  be 
required  to  file  a  statement  under 
oath,  giving  a  detailed  history  of 
the  invention,  describing  its  original 
conception,  the  successive  experi- 
ments, extent,  and  character  of  use, 
and  various  forms  of  embodiment, 
&c.     The  statement  of  each  party 


is  to  be  sealed,  and  not  opened  until 
at  an  appointed  time  by  the  ex- 
aminer of  interferences.  If  that 
officer  then  determines  that  the  re- 
spective statements  show  a  case 
warranting  the  declaration  of  an 
interference,  he  declares  it,  and 
neither  of  the  opposing  parties  can 
have  access  to  the  statement  of  the 
other  until  the  time  for  fiUng  both 
has  expired. 

This  rule  certainly  oifers  some 
check  upon  the  subsequent  proceed- 
ings, some  bounds  to  the  testimony 
to  be  adduced,  by  confining  the 
parties  to  a  particular  case  of  their 
own  showing,  and  by  affording  a 
basis  for  cross-examining  an  oppo- 
nent's witnesses. 

But  the  rule  is  serviceable  in 
another  way,  as  allowing  the  oppor- 
tunity of  nipping  in  the  bud  many 
interferences,  which,  if  proceeded 
with,  might  result  in  nothing  but 
useless  expense. 

Thus,  it  is  provided,  that  if  the 
party  upon  whom  rests  the  burden 
of  proof — i.  e.,  the  latest  appUcant 
fails  to  file  a  statement,  or  if  his 
statement  fails  to  overcome  the 
prima  facie  case  made  by  the  re- 
spective applications — i.  e.,  if  the 
date  of  invention  given  by  the  later 
appUcant  should  not  be  anterior  to 
the  date  of  application  by  the  earlier 
— or  if  it  shows  that  he  has  aban- 
doned his  invention,  or  that  it  has 
been  in  pubUc  use  more  than  two 
years  before  his  application,  the 
other  party  will  be  entitled  to  an 
immediate  adjudication  of  the  case 


64      General  Features  of  the  U.  S.  Patent  Laws — Interferences. 


upon  the  record :  unless  a  presump- 
tion is  created  that  his  right  to  a 
patent  is  affected  by  the  alleged  pub- 
lic use  of  the  invention,  in  which 
case  the  interference  may  be  pro- 
ceeded with.  This  latter  proviso  is 
necessary  because  a  determination 
against  the  right  of  one  man  to  a 
patent  cannot  be  made  upon  the  ex 
parte  statement  of  another.  A  per- 
son's ex  parte  sworn  statement  may 
be  allowed  to  determine  the  question 
of  his  own  right,  but  not  that  of  the 
right  of  another.  It  is  further  pro- 
vided that  if  the  earlier  applicant 
fail  to  file  a  preliminary  statement, 
he  will  not  be  allowed  to  present  any 
testimony  going  to  prove  that  he 
made  the  invention  at  a  date  prior 
to  his  appUcation. 

The  preliminary  statements  are 
not  evidence  for  the  parties  making 
them. 

Under  the  present  law  and  office 
rules,  then,  cases  of  interferences 
may  be  regarded  as  a  fair  and  effi- 
cient means  of  trying  and  determin- 
ing questions  of  priority  of  inven- 
tion, and  a  just  ultimate  decision 
may  be  expected  in  every  case,  for 
parties  to  such  a  case  have  the  same 
rights  of  appeal  from  the  Examiner 
to  the  Board  of  Examiners  in  chief, 
and  from  that  Board  to  the  Com- 
missioner of  Patents  in  person,  as 
in  other  questions  touching  the 
rights  of  applicants  for  patents. 

As  regards  the  cases  in  which 
under  the  law  the  Commissioner 
may  declare  an  interference,  they 
include  any  and  every  case  in  which 


there  may  arise  adverse  claims  of 
invention,  whether  by  reason  of  two 
or  more  contemporary  j>endiug  ap- 
plications for  patents  for  inventions 
altogether  or  in  some  material  part 
the  same,  or  by  reason  of  an  appli- 
cation for  a  patent  or  for  a  reissue 
with  a  claim  to  something  claimed 
or  clearly  shown  in  any  patent  or 
patents  previously  granted. 

This  power  may  be  very  benefi- 
cially used  to  check  what  was  at 
one  time  a  practice  as  common  as 
it  is  mischievous,  that  of  reissu- 
ing patents  for  the  sole  purpose 
of  so  extending  their  claims  as  to 
cover  some  feature  of  value  in  pat- 
ents granted  subsequently  to  those 
sought  to  be  reissued. 

In  the  case  of  an  interference 
between  an  application  for  a  patent 
and  a  patent  granted,  the  power  of 
the  Commissioner  extends  only  to 
granting  another  patent  to  the  ap- 
plicant, should  he  appear  to  have 
been  the  actual  first  and  true  inven- 
tor. He  cannot  recall  or  cancel  the 
prior  patent. 

His  office  is  in  its  nature  minis- 
terial, and  concerns  only  the  grant- 
ing of  patents ;  and  his  discretion- 
ary, or,  what  may  be  termed  his 
quasi-judicial  powers,  therefore,  are 
confined  to  the  consideration  and 
determination  of  such  questions  only 
as  concern  the  granting  of  patents. 
His  duty  is  to  grant  a  patent  to 
whomsoever  may  appear  to  be  the 
true  and  first  inventor  of  a  patent- 
able subject-matter,  and  justly  en- 
titled imder  the  law  to  receive  a 


General  Features  of  the  U.  S.  Patent  Laws — Priority. 


65 


patent  therefor.  In  the  execution 
of  this  duty  it  is  necessary  for  him 
to  consider  and  decide  disputed 
questions  of  priority  of  invention  ; 
but  with  that  and  the  grant  or  re- 
fusal of  a  patent,  in  accordance  with 
his  determination,  his  duty  and 
power  end. 

The  power  of 'annulling  or  de- 
creeing the  invalidity  of  patents,  or 
other  public  grants,  is  one  of  the 
chancery  powers  of  the  courts  of 
the  United  States. 

Consequently  where,  through  the 
issue  of  an  interference  in  the  Pat- 
ent Office,  or  through  accident,  there 
are  two  or  more  iiatents  for  the  same 
thing,  of  which  only  one  of  course 
can  be  valid,  the  invalidity  of  the 
others  can  be  authoritatively  as- 
certained and  decreed  only  by  a 
court  of  the  United  States  having 
jurisdiction  of  such  questions. 

Under  Section  58  of  the  Patent 
Act :  "  Wlienever  there  shall  be  in- 
terfering patents,  any  person  inter- 
ested in  any  one  of  such  interfering 
patents,  or  in  the  working  of  the  in- 
vention claimed  under  either  of  such 
patents,  may  have  relief  against  the 
interfering  patentee,  and  all  parties 
interested  under  him,  by  suit  in 
equity  against  the  owners  of  the 
interfering  patent ;  and  the  court 
having  cognizance  thereof,  on  notice 
to  adverse  parties  and  other  due 
proceedings  had,  may  adjudge  and 
declare  either  of  the  patents  void  in 
whole  or  in  part,  or  inoi>erative,  or 
invalid  in  any  particular  part  of  the 
United  States  according  to  the  in- 


terest of  the  parties  in  the  patent  or 
the  invention  patented.  But  no 
such  judgment  or  adjudication  shall 
affect  the  right  of  any  person  ex- 
cept the  parties  to  the  suit  and 
those  deriving  title  under  them 
subsequent  to  the  rendition  of  such 
judgment." 

In  the  case  of  an  interference  in 
the  Patent  Office  between  an  ap- 
plication and  a  prior  patent, 
should  the  applicant  be  adjudged 
the  prior  inventor,  the  only  measure 
of  justice  which  the  Commissioner 
has  power  to  perform  is,  by  grant- 
ing a  patent  to  the  applicant,  to  put 
him  in  a  position  to  avail  himself, 
should  he  desire  to  do  so,  of  the 
remedy  presented  by  this  section 
against  the  prior  patentee. 


The  point  to  be  adjudged  in  a 
case  of  interference  is  "priority  of 
invention."  The  general  rule  is 
that  he  is  in  the  eye  of  the  law  the 
first  inventor  who  has  first  perfected 
and  adapted  the  invention  to  use. 

But  this  rule  is  subject  to  the 
qualification  that  he  who  first  in- 
vents, i.  €.,  mentally  originates, 
shall  have  the  prior  right,  if  he  were 
using  reasonable  diligence  in  adapt- 
ing and  perfecting  the  invention. 
Thus  it  is  made  by  the  statute  a  de- 
fence against  a  patent,  that  the  pat- 
entee had  surreptitiously  or  unjustly 
obtained  the  patent  for  that  which 
was  in  fact  invented  by  another, 
who  was  using  reasonable  diligence  in 
adapting  and  perfecting  the  same. 

It  has  been  held  that  the  words 


66 


General  Features  of  the  U.  S.  Patent  Laws — Priority. 


"surreptitiously,"  or  "unjustly," 
as  here  used,  do  not  necessarily  im- 
ply that  bad  faith  on  the  part  of  the 
patentee  must  be  shown  to  make 
this  defence  available.  But  it  will 
be  deemed  that  a  patent  has  been 
wrongfully  obtained,  when  it  is  for 
something  which  was  in  fact  first 
invented  by  another  than  the  pat- 
entee, if  the  prior  inventor  was  at 
the  time  using  reasonable  diligence 
in  adapting  and  perfecting  the  in- 
vention. 

This  reconciles  the  reference  in 
oiur  patent  law  of  the  doctrine  that 
"he  who  is  prior  in  time  has  the 
better  right"  to  the  time  of  the 
making  of  an  invention,  with  the 
general  maxim  that  "  the  laws 
serve  the  diligent,  and  not  the  sloth- 
ful." A  right  of  priority  must  be 
perfected  by  diligence. 

The  courts  will  not  allow  the  plea 
of  "prior  invention"  to  overcome 
the  title  of  a  patentee  whose  patent 
was  obtained  in  good  faith,  unless 
it  be  shown  that  the  alleged  prior 
inventor  had  actually  reduced  his 
conception  to  practice  in  a  practi- 
cally useful  and  operative  form,  or 
that  being  the  first  to  invent,  he  was, 
at  the  time  the  patentee  obtained  his 
patent,  exercising  reasonable  dili- 
gence to  adapt  and  perfect  the  in- 
vention. 

A  mere  prior  conception  of  an 
idea,  ending  in  experiment,  and 
never  reduced  to  that  practical 
shape  in  which  alone  it  can  be  use- 
ful to  the  pubhc,  and  can  attract 
public  attention,  will  not  sufllce  to 


destroy  the  title  of  a  patentee,  who 
being  himself  a  boiut  fide  original 
inventor,  has  reduced  the  invention 
to  successful  practice,  and  i>ublished 
it  by  obtaining  his  patent. 

By  these  judicially  established 
principles  the  Patent  Office  is  guided 
in  determining  the  questions  of 
"  priority  of  invention,"  in  ca^es  of 
interference. 

If  the  interference  be  between  the 
claim  of  an  applicant  and  that  of 
a  patentee,  theprima  facie  presump- 
tion is  in  favor  of  the  latter,  and 
the  burden  is  upon  the  applicant  to 
show  that  he  was  the  first  inventor, 
and  also  that  he  had  either  actually 
reduced  the  invention  to  a  practi- 
cally operative  shape  before  the  in- 
terfering patent  was  obtained,  or 
that  at  the  time  it  was  obtained,  he 
was  exercising  reasonable  diligence 
to  bring  it  into  such  shajie  ;  and, 
furthermore,  it  must  appear  that  the 
applicant  has  not  unnecessarily  de- 
layed bringing  his  claim,  but  that 
he  has  been  reasonably  diligent,  as 
well  in  bringing  his  application  as 
in  perfecting  his  invention.  If  he 
cannot  show  this,  the  first  patent 
will  not  be  disturbed  by  the  grant 
■  of  a  second 

Where  the  interference  is  between 
independent  applicants  for  patents, 
there  is  not  that  strength  of  pre- 
sumption in  favor  of  either  party 
which  the  possession  of  a  patent,  a 
vested  right,  creates :  stUl  there  is 
a  presumption  in  favor  of  the  earli- 
est applicant,  on  the  reasonable  prin- 
ciple that,  in  the  absence  of  proof  to 


General  Features  of  the  U.  S.  Patent  Laws^Diligence.        6T 


the  contrary,  the  first  to  seek  the 
benefit  of  the  law  must  be  presumed 
to  have  the  prior  and  better  right. 
This  presumption  goes  no  furtlier 
than  to  require  tliat  the  later  appli- 
cant must  first  prove  a  date  for  his 
invention  anterior  to  the  application 
of  his  opponent,  before  the  latter 
need  offer  proof  as  to  the  date  of  his 
invention  other  than  that  which  his 
application  aftbrds. 

The  general  principles  applied  to 
the  decision  of  priority,  as  between 
applicants  for  patents,  are  the  same 
as  in  other  cases.  He  will,  as  a  rule, 
l3e  held  the  first  inventor,  entitled 
to  the  benefit  of  the  law,  who  being 
bond  fide  an  inventor  first  reduced 
the  invention  to  a  practical  form 
beneficial  to  the  public. 

As  to  the  evidence  which  Avill 
suffice  to  prove  invention,  the  rule 
would  seem  td  be  that  the  idea  must 
have  been  so  far  reduced  to  practice 
as  to  have  been  illustrated  or  de- 
scribed in  a  mode  sufficient  to  en- 
able a  person  skilled  in  the  art  to 
which  the  invention  may  refer,  to 
make  or  practice  it,  without  calling 
for  the  exercise  on  his  part  of  more 
than  the  ordinary  skill  of  his  trade. 
IjCSS  than  this  will  not  evidence  a 
matured,  and  therefore  patentable, 
invention  ;  such  an  invention  as  the 
law  will  protect. 

It  will  be  seen  tliat  the  question 
of  "diligence"  has  a  most  material 
bearing  upon  that  of  "priority  of 
right  in  law,"  and  this  matter  of 
diligence  enters  not  only  into  the 
reduction  of  an  invention  to  prac- 


tice, but  into  the  making  and  prose- 
cution of  application  for  a  patent, 
wherever  there  is  a  question  of  right 
between  independent  inventors.  Es- 
pecially is  this  the  case  where  one 
or  other  of  the  disputants  is  in  pos- 
session of  a  patent  obtained  in  good 
faith :  the  right  of  such  a  patentee 
will  not  be  disturbed  in  favor  of  a 
slothful  inventor,  prior  in  point  of 
conception,  but  who,  after  the  grant 
of  the  patent  to  his  competitor,  of 
which  as  matter  of  public  record  he 
in  common  with  the  rest  of  the  pub- 
lic is  presumed  to  have  knowledge, 
has  unnecessarily  delayed  perfecting 
and  adapting  the  invention  to  use, 
and  presenting  his  claim. 

It  has  been  found  necessary  to 
spur  the  diligence  of  applicants  for 
patents  even  in  cases  entirely  ex 
parte  by  providing  (Sec.  32)  that  all 
applications  for  patents  shall  be  com- 
pleted and  prejiared  for  examination 
within  two  years  after  the  filing  of 
the  petition,  and  in  default  thereof, 
or  wjxwi  failure  of  the  applicant  to 
prosecute  the  same  within  ttoo  years 
after  any  action  therein^  of  which  no- 
tice shall  have  been  given  to  the  ap- 
plicant, they  shall  be  regarded  as 
abandoned  by  the  parties  thereto, 
unless  it  be  shown  to  the  satisfac- 
tion of  the  Commissioner  that  such 
delay  was  unavoidable. 


If  an  applicant  for  a  patent  is  not 
satisfied  with  the  justice  of  a  de- 
cision of  the  Commissioner  of  Pat- 
ents, refusing  him  a  patent,  he  may 
appeal  to  the  Supreme  Court  of  the 


68 


General  Features  of  the  U.  S.  Patent  Laws — Appeals. 


District  of  Columbia,  which  may- 
reverse  the  decision  of  the  Commis- 
sioner. By  the  decision  of  the  court, 
duly  cei*tifled  to  and  recorded  in  the 
Patent  Office,  the  further  proceed- 
ings in  that  office  are  to  be  regula- 
ted, and  if  no  reasons  are  found  for 
refusing  a  patent,  beyond  those 
raised  and  adjudicated  in  the  ap- 
peal, the  Commissioner  is  bound  by 
a  decision  favorable  to  the  appli- 
cant to  issue  a  patent.  But  as  the 
court  is  to  consider  the  case,  on  the 
evidence  produced  before  tlie  Commis- 
sioner, and  its  decision  is  conlined 
to  the  points  raised  in  the  appeal,  if 
the  Commissioner  after  such  de- 
cision finds  good  reasons,  not  in- 
volved in  the  appeal,  or  dei)ending 
upon  new  evidence  not  formerly  be- 
fore him,  for  still  withholding  the 
patent,  It  is  within  his  discretionary 
power  so  to  do.  In  other  words,  the 
decision  of  the  court  upon  appeal,  if 
favorable  to  the  applicant,  is  not 
that  the  Commissioner  sJiall  issue  a 
patent,  but  that  he  shall  not  with» 
hold  it  upon  the  grounds  raised  in 
the  appeal ;  and  it  might  seem  that 
as  often  as  the  Commissioner  may 
refuse  a  patent  upon  new  grounds, 
the  applicant  may  appeal  to  the 
court.  The  right  of  appeal  to  the 
Supreme  Court  of  the  District  of 
Columbia  does  not  extend  to  parties 
in  interference. 

The  remedy  of  an  inventor  against 
what  he  may  consider  an  unjust  re- 
fusal of  a  patent  does  not  end  even 
here. 

Section  52  of  the  act   provides 


that  when  an  application  for  a  pat- 
ent is  refused /or  any  reason  what- 
ever, either  by  the  Commissioner, 
or  by  the  Supreme  Court  of  the  Dis- 
trict of  Columbia  on  appeal  from  the 
Commissioner,  the  applicant  may 
have  remedy  by  bill  in  equity  in  a 
court  of  the  United  States  having 
cognizance  of  such  cases  under  the 
patent  law ;  and  the  coux-t  upon 
notice  to  adverse  parties,  and  other 
due  proceedings  had,  may  adjudge 
that  such  applicant  is  entitled,  ac- 
cording to  law,  to  receive  a  patent 
for  his  invention,  as  specified  in  his 
claim,  or  for  any  part  tliereof,  as  the 
facts  in  the  case  may  appear. 

This  remedy  by  bill  in  equity  is 
applicable  to  all  cases  Avhere  a  pat- 
ent may  have  been  refused. 

If  the  refusal  has  been  on  account 
of  an  adverse  decision  by  the  Com- 
missioner, in  a  case  of  interference, 
the  party  in  whose  favor  the  Com- 
missioner's decision  was  rendered  is 
entitled  to  notice,  and  to  become  a 
party  in  the  proceedings  ujjon  the 
bill.  Where  there  is  no  opposing 
party  a  copy  of  the  bill  is  to  be 
served  on  the  Commissioner. 

Proceedings  under  this  section  are 
not  in  the  nature  of  an  appeal,  and 
are  not  to  be  governed  by  the  evi- 
dence in  the  case  before  the  Com- 
missioner, but  they  are  original 
proceedings,  in  which  such  original 
evidence  may  be  adduced  as  shall 
be  considered  essential  to  arriving 
at  a  just  decision. 

An  adjudication  in  favor  of  the 
appUcant  authorizes  the  Commis- 


Bemedies  for  Infringement. 


69 


sioner  to  issue  such  patent  as  it 
shall  be  decided  the  applicant  is  en- 
titled to,  upon  the  applicant  filing 
in  the  Patent  Office  a  copy  of  the 
adjudication,  and  otherwise  com- 
plying with  the  provisions  of  the 
law. 


It  only  remains  now  briefly  to  in- 
quire as  to  the  modes  in  which  a  rem- 
edy may  be  had  for  the  infringement 
of  a  patent. 

There  are  two  ends  which  it  is 
generally  essential  to  the  interests 
of  a  patentee  he  should  have  the 
means  of  accomplishing  by  resort 
to  the  courts, — a  remedy  for  injury 
from  past  infringement,  and  the 
prevention  of  infringement  in  the 
future. 

Damages  for  infringement  may  be 
had  by  action  at  law  in  the  Circuit 
Courts  of  the  United  States,  or 
those  District  Courts  exercising  cir- 
cuit court  jurisdiction.  And  as  a 
check  upon  deliberate,  wrongful  in- 
fringements, the  courts  are  empow- 
ered, "'whenever  in  any  such  ac- 
tion a  verdict  is  rendered  for  the 
plaintiff,  to  enter  judgment  thereon 
for  any  siun  above  the  amount 
found  by  the  verdict  as  the  actual 
damages  sustained,  according  to 
the  circumstances  of  the  case,  not 
exceeding  three  times  the  amount 
of  such  verdict,  together  with  the 
costs.  But  this  remedy  at  law  is 
generally  quite  inadequate  to  the 
needs  of  patentees,  since  it  does  not 
prevent  further  infringement  by  the 
party  sued,  and  for  each  new  act  of 


infringement  fresh  suit  must  be 
brought.  For  the  purpose  of  pre- 
venting further  infringement,  it  is 
necessary  to  resort  to  proceedings  in 
equity,  which  may  be  brought  in  the 
same  courts.  Section  55  of  the  law 
empowers  the  courts,  upon  bill  in 
equity  filed  by  any  party  aggrieved, 
to  grant  injunctions  to  prevent  the 
violation  of  any  right  secured  by 
patent,  on  such  terms  as  the  court 
may  deem  reasonable." 

Injunctions  are  either  temporary 
or  perpetual.  A  temporary  injunc- 
tion is  one  granted  before  a  final 
hearing  of  the  cause,  and  may  be 
granted  at  the  discretion  of  the 
court  at  any  time  after  the  filing  of 
the  bill,  upon  motion,  of  which  rea- 
sonable previous  notice  shall  have 
been  given  to  the  defendant,  accom- 
panied by  copies  of  the  affidavits  to 
be  read  in  support  of  the  motion. 

A  temporary'  injunction  prohibits 
continuance  of  the  infringement 
complained  of  in  the  bill  until  the 
question  of  the  complainant's  right 
under  his  patent  shall  have  been 
tried,  or  until  further  order  of  the 
court.  It  is  a  summary  proceed- 
ing, in  order  to  protect  a  patentee 
against  the  irreparable  injury  that 
might  ensue  to  him  by  an  unchecked 
continuance  of  infringement  during 
the  time  necessary  for  bringing  a 
cause  to  final  hearing. 

But  as  it  is  a  proceeding  tending 
to  bind  the  rights  of  a  defendant, 
before  a  fair  and  full  trial  has  been 
had,  and  one  which  may  work 
great,  and,  as  it  may  prove,  unwar- 


TO 


General  Features  of  the  U.  S.  Patent  Laws. 


ranted  injury  to  the  party  enjoined, 
the  courts  exercise  the  power  with 
great  caution,  and  only  where  there 
has  been  exclusive  possession  under 
the  patent  for  some  years,  with  ac- 
quiescence of  the  public  in  the  pat- 
entee's right,  or  where  the  patent  has 
been  previously  judicially  sustained 
after  full  trial  at  law  or  in  equity  ; 
nor  will  the  power  be  exercised  if 
the  defendant,  by  affidavits,  rebut- 
ting and  overbearing  the  weight  of 
those  of  the  complainant,  can  throw 
reasonable  doubt,  on  grounds  not 
theretofore  adjudicated,  upon  the 
patentee's  title,  or  can  indicate  that 
he  is  not  a  mere  wrongdoer,  but  has 
a  good  defence  against  the  action. 
The  court  in  granting  a  temporary 
injunction,  may  couple  with  the 
grant  such  conditions,  either  on  one 
or  on  both  sides,  as  under  the  cir- 
cumstances of  the  case  may  seem 
reasonable ;  or,  it  may  allow  the 
defendant  to  give  security  to  keep 
an  account  of  profits  from  the  use  of 
the  invention,^  and  this  it  will  do, 
where  it  api^ears  from  the  circum- 
stances that  in  this  way  the  interests 
of  the  patentee  will  be  substantially 
protected,  while  an  injunction  would 
work  disproportionate  mischief  to 
the  defendant.  A  temporary  injunc- 
tion will  not  be  granted  where  it 
appears  that  the  patentee  has  not 
been  diligent  in  seeking  his  remedy, 
but  has  allowed  infringement  to  con- 
tinue for  a  considerable  period  of 
tune  without  taking  steps  to  pre- 
vent it. 

A  temporarj'  injunction  may  be 


dissolved  at  any  time  upon  motion 
of  the  party  enjoined,  made  after 
reasonable  previous  notice  to  the 
complainant,  and  supported  by  affl- 


A  perpetual  injunction  is  one 
granted  upon  a  decree  in  favor  of  the 
patentee  after  final  hearing  upon 
proofs  and  argument  m  equit}',  or 
after  a  judgment  m  favor  of  the 
patentee  in  a  trial  at  law,  and  its 
effect  is  to  enjoin  the  defendant  from 
infringement  during  the  term  of  the 
patent. 

Fonnerly  it  was  the  practice  here, 
as  it  still  is  in  England,  for  the  court 
in  equity,  when  an  application  for  an 
injunction  raised  disputed  questions 
of  fact  affecting  the  patentee's  title, 
to  order  a  trial  at  law,  tliat  these 
questions  of  fact  might  be  passed 
upon  by  a  jury ;  but  here,  since  pat- 
ent causes,  whether  in  law  or  in 
equity,  are  cognizable  in  the  same 
court,  and  since  it  is  competent  for 
the  court  in  equity  to  consider-  and 
determine  all  disputed  points  in 
such  causes,  whether  of  fact  or  of 
law,  generally  patent  cases  are  now 
so  tried  and  determined,  upon  proofs 
taken  after  the  course  in  equity,  be- 
fore an  examiner  appointed  by  the 
court. 

The  questions  of  fact  arising  m 
patent  causes  are  generally  of  such 
a  nature  that  they  may  be  deter- 
mined much  more  sjieedily,  readily, 
and  satisfactorily  by  a  judge  than 
by  a  jury,  and  under  the  present 
law  all  the  remedies  which  proceed- 


Remedies  for  Infringement —  Conclusion. 


Tl 


ings  at  law  might  afford  a  patentee 
for  infringement  of  his  right,  he  can 
obtain  by  proceedings  in  equity, 
while  the  latter  will  also  afford  him 
further  remedy,  very  much  more 
complete  and  beneficial  than  he 
could  possibly  obtain  by  proceed- 
ings at  law. 

"Upon  a  decree  being  rendered 
for  infringement,  the  complainant 
shall  be  entitled  to  recover,  in 
addition  to  the  profits  to  be  ac- 
counted for  by  the  defendant,  the 
damci/jes  the  complainant  has  sus- 
tained thereby,  and  the  court  shall 
assess  the  same,  or  cause  the  same 
to  be  assessed  under  its  direction,- 
and  the  court  shall  have  the  same 
powers  to  increase  the  same,  in  its 
discretion,  that  are  given  by  this 
act  to  increase  the  damages  found 
by  verdict  in  actions  upon  the 
case,"   (Sec.  55.) 

It  is  not  necessary  to  sustain  an 
action  for  infringement,  that  the 
whole  of  the  invention  patented 
should  have  been  infringed,  but 
remedy  may  be  had  for  the  infringe- 
ment of  any  material  or  substantial 
part  thereof  claimed. 

Actions  for  infringement  may  be 
brought  in  the  name  of  the  owner 
or  joint  owners  of  the  legal  title  to 
the  patent  throughout  the  whole  of 
the  United  States,  or  within  the 
particular  part  or  portion  of  the 
United  States  in  which  the  action 
is  brought.  A  licensee  cannot  bring 


such  an  action,  except  he  join  with 
him  the  party  or  parties  in  whom 
the  legal  title  to  the  patent  is  vested 
within  the  territory  over  which  the 
court  wherein  the  action  is  brought 
has  jurisdiction.  Actions  for  in- 
fringement must  be  brought  during 
the  term  of  the  patent,  or  within 
six  years  after  its  expiry. 

CONCLUSION. 

^Lt  this  point  we  close  our  brief 
summary  of  the  general  features  of 
the  Patent  Laws  of  the  United 
States,  and  with  it  the  treatise. 

As  far  as  was  possible,  we  have 
ranged  the  subjects  together  in  such 
a  way  as  to  produce  a  connected 
review  of  the  entire  ground.  Of 
course,  there  are  many  special  mat- 
ters of  law  and  doctrine  respecting 
patents  which  have  not  been  touched 
upon,  specialties  out  of  place  in  a 
pamphlet  avowedly  devoted  to  a 
grouping  of  information  of  a  merely 
general  character. 

As  to  those  subjects  which  are 
treated  more  at  length,  we  venture 
to  express  a  hoi>e  that  our  endeavors 
plainly  and  concisely  to  illustrate 
the  principles  governing  property  in 
invention,  will  not  be  altogether  in- 
efiectual  in  throwing  light  upon 
matters  which  Jiave  heretofore,  by 
so  many  minds,  been  but  partially 
and  obscurely  understood. 

H.  &  C.  H. 


THE  ACT 


RELATING  TO 


PATENTS 


j^i<riD  ooI=■2"I^Ia-Ia:TS. 


APPROVED  JULY  8,  1870. 


PRINTED    FROM    AN    OFFICIAL    COPY 

ESPECIALLY   FOR  AND  PUBLISHED  BY 

HOWSON  &   SON, 

AT  THEIR 

United  States  and  European  Patent  Offices, 


FORREST   BUILDING, 

110  So.  Fourth  street, 

FHILASELFHIA. 


MARBLE    BUILDING, 

60S  Seventh  Street, 

WASHINGTON,  D.  C. 


PHILADELPHIA: 
SHERMAN    &   CO.,   PRINTERS. 

1872. 


75 


AN  ACT 

To  Eevise,  Consolidate,  and  Amend  the  Statutes 
Relating  to  Patents  and  Copyrights. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of  the 
United  States  of  America  in  Congress  assembled,  That  there  shall 
be  attached  to  the  Department  of  the  Interior  the  office,  here- 
tofore established,  known  as  the  Patent  Office,  wherein  all 
records,  books,  models,  drawings,  specifications,  and  other  pa- 
pers and  things  pertaining  to  patents,  shall  be  safely  kept  and 
preserved. 

Sec.  2.  And  be  it  further  enacted,  That  the  officers  and  em- 
ployees of  said  office  shall  continue  to  be:  one  Commissioner  of 
Patents,  one  Assistant  Commissioner,  and  three  ex^miners-in- 
chief,  to  be  appointed  by  the  President,  by  and  with  the  advice 
and  consent  of  the  Senate;  one  chief  clerk,  one  examiner  in 
charge  of  interferences,  twenty-two  principal  examiners,  twenty- 
two  first-assistant  examiners,  twenty-two  second-assistant  ex- 
aminers, one  librarian,  one  machinist,  five  clerks  of  class  four, 
six  clerks  of  class  three,  fifty  clerks  of  class  two,  forty-five 
clerks  of  class  one,  and  one  messenger  and  purchasing  clerk,  all 
of  whom  shall  be  appointed  by  the  Secretary  of  the  Interior, 
upon  nomination  of  the  Commissioner  of  Patents. 

Sec.  3.  And  be  it  further  enacted.  That  the  Secretary  of  the 
Interior  may  also  appoint,  upon  like  nomination,  such  addi- 
tional clerks  of  classes  two  and  one,  and  of  lower  grades,  copy- 
ists of  drawings,  female  copyists,  skilled  laborers,  laborers,  and 
watchmen,  as  may  be  from  time  to  time  appropriated  for  by 
Congress. 

Sec.  4.  And  be  it  further  enacted,  That  the  annual  salaries  of 
the  officers  and  employees  of  the  Patent  Office  shall  bo  as  fol- 
lows : 


76 

Of  the  Commissioner  of  Patents,  four  thousand  fiye  hundred 
dollars. 

Of  the  Assistant  Commissioner,  three  thousand  dollars. 

Of  the  examiners-in- chief,  three  thousand  dollars  each. 

Of  the  chief  clerk,  two  thousand  five  hundred  dollars. 

Of  the  examiner  in  charge  of  interferences,  two  thousand  five 
hundred  dollars. 

Of  the  principal  examiners,  two  thousand  five  hundred  dol- 
lars each. 

Of  the  first-assistant  examiners,  one  thousand  eight  hundred 
dollars  each. 

Of  the  second-assistant  examiners,  one  thousand  six  hundred 
dollars  each. 

Of  the  librarian,  one  thousand  eight  hundred  dollars. 

Of  the  machinist,  one  thousand  six  hundred  dollars. 

Of  the  clerks  of  class  four,  one  thousand  eight  hundred  dol- 
lars each. 

Of  the  clerks  of  class  three,  one  thousand  six  hundred  dol- 
lars  each. 

Of  the  clerks  of  class  two,  one  thousand  four  hundred  dollars 
each. 

Of  the  clerks  of  class  one,  one  thousand  two  hundred  dollars 
each. 

Of  the  messenger  and  purchasing  clerk,  one  thousand  dollars. 

Of  laborers  and  watchmen,  seven  hundred  and  twenty  dol- 
lars each. 

Of  the  additional  clerks,  copyists  of  drawings,  female  copy- 
ists, and  skilled  laborers,  such  rates  as  may  be  fixed  by  the  acts 
making  appropriations  for  them. 

Sec.  5.  And  be  it  Juriher  enacted,  That  all  officers  and  em- 
ployees of  the  Patent  Office  shall,  before  entering  upon  their 
duties,  make  oath  or  affirmation  truly  and  faithfully  to  execute 
the  trusts  committed  to  them. 

Sec.  6.  And  be  if  further  enacted,  That  the  Commissioner  and 
chief  clerk,  before  entering  upon  their  duties,  shall  severally  give 
bond,  with  sureties,  to  the  Treasurer  of  the  United  States ;  the 
former  in  the  sum  of  ten  thousand  dollars,  and  the  latter  in  the 
sum  of  five  thousand  dollars,  conditioned  for  the  faithful  dis- 
charge of  their  duties,  and  that  they  will  render,  to  the  proper 
officers  of  the  treasury,  a  true  account  of  all  money  received 
by  virtue  of  their  office. 


77 

Sec.  7.  And  be  it  further  enacted,  That  it  shall  be  the  duty  o. 
the  Commissioner,  under  the  direction  of  the  Secretary  of  the 
Interior,  to  superintend  or  perform  all  the  duties  respecting  the 
granting  and  issuing  of  patents  which  herein  are,  or  may  here- 
after be,  by  law  directed  to  be  done  ;  and  he  shall  have  charge 
of  all  books,  records,  papers,  models,  machines,  and  other 
things  belonging  to  said  office. 

Sec.  8.  And  be  it  further  enacted,  That  the  Commissioner 
may  send  and  receive  by  mail,  free  of  postage,  letters,  printed 
matter,  and  packages  relating  to  the  business  of  his  office,  in- 
cluding Patent  Office  reports. 

Sec.  9.  A7id  be  it  further  enacted.  That  the  Commissioner 
shall  lay  before  Congress,  in  the  month  of  January,  annually  a 
report,  giving  a  detailed  statement  of  all  moneys  received  for 
patents,  for  copies  of  records  or  drawings,  or  from  any  other 
source  whatever  ;  a  detailed  statement  of  all  expenditures  for  con- 
tingent and  miscellaneous  expenses  ;  a  list  of  all  patents  which 
were  granted  during  the  preceding  year,  designating  under 
proper  heads  the  subjects  of  such  patents;  an  alphabetical  list 
of  the  patentees,  with  their  places  of  residence;  a  list  of  all 
patents  which  have  been  extended  during  the  year ;  and  such 
other  information  of  the  condition  of  the  Patent  Office  as  may 
be  useful  to  Congress  or  the  public. 

Sec.  10.  And  be  it  further  enacted,  That  the  examiners-in- 
chief  shall  be  persons  of  competent  legal  knowledge  and  scien- 
tific ability,  whose  duty  it  shall  be,  on  the  written  petition  of 
the  appellant,  to  revise  and  determine  upon  the  validity  of  the 
adverse  decisions  of  examiners  upon  applications  for  patents, 
and  for  reissues  of  patents,  and  in  interference  cases ;  and  when 
required  by  the  Commissioner,  they  shall  hear  and  report  upon 
claims  for  extensions,  and  perform  such  other  like  duties  as  he 
may  assign  them. 

Sec.  11.  And  be  it  further  enacted,  That  in  case  of  the  death, 
resignation,  absence  or  sickness  of  the  Commissioner,  his  duties 
shall  devolve  upon  the  Assistant  Commissioner  until  a  successor 
shall  be  appointed,  or  such  absence  or  sickness  shall  cease. 

Sec.  12.  And  be  it  further  enacted.  That  the  Commissioner 
shall  cause  a  seal  to  be  provided  for  said  office,  with  such  device 
as  the  President  may  approve,  with  which  all  records  or  papers 


78 

issued  from  said  office,  to  be  used  in  evidence,  shall  be  authen- 
ticated. 

Sec.  13.  And  be  it  further  enacted,  That  the  Commissioner 
shall  cause  to  be  classified  and  arranged  in  suitable  cases,  in  the 
rooms  and  galleries  provided  for  that  purpose,  the  models,  spe- 
cimens of  composition,  fabrics,  manufactures,  works  of  art,  and 
designs,  which  have  been,  or  shall  be  deposited  in  said  office  : 
and  said  rooms  and  galleries  shall  be  kept  open  during  suitable 
hours  for  public  inspection. 

Sec.  14.  And  be  it  further  enacted,  That  the  Commissioner 
may  restore  to  the  respective  applicants,  such  of  the  models  be- 
longing to  rejected  applications  as  he  shall  not  think  necessary 
to  be  preserved,  or  he  may  sell  or  otherwise  dispose  of  them, 
after  the  application  has  been  finally  rejected  for  one  year,  pay- 
ing the  proceeds  into  the  treasury,  as  other  patent  moneys  are 
directed  to  be  paid. 

Sec.  15.  And  be  it  further  enacted,  That  there  shall  be  pur- 
chased for  the  use  of  said  office,  a  library  of  such  scientific  works 
and  periodicals,  both  foreign  and  American,  as  may  aid  the 
officers  in  the  discharge  of  their  duties,  not  exceeding  the  amount 
annually  appropriated  by  Congress  for  that  purpose. 

Sec.  16.  And  be  it  further  enacted,  That  all  officers  and  em- 
ployees of  the  Patent  Office  shall  be  incapable,  during  the  period 
for  which  they  shall  hold  their  appointments,  to  acquire  or  take, 
directly  or  indirectly,  except  by  inheritance  or  bequest,  any  right 
or  interest  in  any  patent  issued  by  said  office. 

Sec.  17.  And  be  it  further  enacted.  That  for  gross  misconduct 
the  Commissioner  may  refuse  to  recognize  any  person  as  a 
patent  agent,  either  generally,  or  in  any  particular  case ;  but 
the  reasons  for  such  refusal  shall  be  duly  recorded,  and  be  sub- 
ject to  the  approval  of  the  Secretary  of  the  Interior. 

Sec.  18.  And  be  it  further  enacted,  That  the  Commissioner 
may  require  all  papers  filed  in  the  Patent  Office,  if  not  correctly, 
legibly,  and  clearly  written,  to  be  printed,  at  the  cost  of  the 
party  filing  them. 

Sec.  19.  And  be  it  further  enacted.  That  the  Commissioner, 
subject  to  the  approval  of  the  Secretary  of  the  Interior,  may 
from  time  to  time  establish  rul6s  and  regulations,  not  inconsis- 


79 

tent  with  law,  for  the  conduct  of  proceedings  in  the  Patent 
Office. 

Skc.  20.  And  be  it  farther  enacted,  That  the  Commissioner 
may  print  or  cause  to  be  printed,  copies  of  the  specifications  of 
all  letters-patent,  and  of  the  drawings  of  the  same,  and  copies 
of  the  claims  of  current  issues,  and  copies  of  such  laws,  decis- 
ions, rules,  regulations,  and  circulars,  as  may  be  necessary  for 
the  information  of  the  public. 

Sec.  21.  And  be  it  further  enacted,  That  all  patents  shall  be 
issued  in  the  name  of  the  United  States  of  America,  under  the 
seal  of  the  Patent  Office,  and  shall  be  signed  by  the  Secretary 
of  the  Interior,  and  countersigned  by  the  Commissioner,  and 
they  shall  be  recorded,  together  with  the  specification,  in  said 
office,  in  books  to  be  kept  for  that  purpose. 

Sec.  22.  And  be  it  further  enacted,  That  every  patent  shall 
contain  a  short  title  or  description  of  the  invention  or  discovery, 
correctly  indicating  its  nature  and  design,  and  a  grant  to  the 
patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen  years, 
of  the  exclusive  right  to  make,  use,  and  vend  the  said  invention 
or  discovery  throughout  the  United  States,  and  the  Territories 
thereof,  referring  to  the  specification  for  the  particulars  thereof; 
and  a  copy  of  said  specifications  and  of  the  drawings  shall  be 
annexed  to  the  patent,  and  be  a  part  thereof. 

Sec.  23.  And  be  it  further  enacted.  That  every  patent  shall 
date  as  of  a  day  not  later  than  six  months  from  the  time  at 
which  it  was  passed  and  allowed,  and  notice  thereof  was  sent  to 
the  applicant  or  his  agent,  and  if  the  final  fee  shall  not  be  paid 
within  that  period,  the  patent  shall  be  withheld. 

Sec.  24.  Avd  be  it  further  enacted,  That  any  person  who  has 
invented  or  discovered  any  new  and  useful  art,  machine,  manu- 
facture, or  composition  of  matter,  or  any  new  and  useful  im- 
provement thereof,  not  known  or  used  by  others  in  this  country, 
and  not  patented,  or  described  in  any  printed  publication  in 
this  or  any  foreign  country,  before  his  invention  or  discovery 
thereof,  and  not  in  public  use,  or  on  sale,  for  more  than  two 
years  prior  to  his  application,  unless  the  same  is  proved  to  have 
been  abandoned,  may,  upon  payment  of  the  duty  required  by 
law,  and  other  due  proceedings  had,  obtain  a  patent  therefor. 


80 


Sec.  25.  And  be  it  further  enacted,  That  no  person  shall  be 
debarred  from  receiving  a  patent  for  his  invention  or  discovery, 
nor  shall  any  patent  be  declared  invalid  by  reason  of  its  having 
been  first  patented  or  caused  to  be  patented  in  a  foreign  country ; 
provided  the  same  shall  not  have  been  introduced  into  public 
use  in  the  United  States  for  more  than  two  years  prior  to  the 
application,  and  that  the  patent  shall  expire  at  the  same  time 
with  the  foreign  patent,  or,  if  there  be  more  than  one,  at  the 
same  time  with  the  one  having  the  shortest  term ;  but  in  no 
case  shall  be  in  force  more  than  seventeen  years. 

Sec.  26.  And  be  it  further  enacted,  That  before  any  inventor 
or  discoverer  shall  receive  a  patent  for  his  invention  or  dis- 
covery, he  shall  make  application  therefor,  in  writing,  to  the 
Commissioner,  and  shall  file  in  the  Patent  Office  a  written 
description  of  the  same,  and  of  the  manner  and  process  of 
making,  constructing,  compounding,  and  using  it,  in  such  full, 
clear,  concise,  and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and  use 
the  same ;  and  in  case  of  a  machine,  he  shall  explain  the  princi- 
ple thereof,  and  the  best  mode  in  which  he  has  contemplated 
applying  that  principle  so  as  to  distinguish  it  from  other  inven- 
tions ;  and  he  shall  particularly  point  out  and  distinctly  claim 
the  part,  improvement,  or  combination  which  he  claims  as  his 
invention  or  discovery  ;  and  said  specification  and  claim  shall 
be  signed  by  the  inventor  and  attested  by  two  witnesses. 

Sec.  27.  And  be  it  further  enacted.  That  when  the  nature  of 
the  case  admits  of  drawings,  the  applicant  shall  furnish  one 
copy  signed  by  the  inventor  or  his  attorney  in  fact,  and  attested 
by  two  witnesses,  which  shall  be  filed  in  the  Patent  Office ;  and 
a  copy  of  said  drawings  to  be  furnished  by  the  Patent  Office, 
shall  be  attached  to  the  patent  as  part  of  the  specification. 

Sec.  28.  And  be  it^urther  enacted.  That  when  the  invention 
or  discovery  is  of  a  composition  of  matter,  the  applicant,  if  re- 
quired by  the  Commissioner,  shall  furnish  specimens  of  ingredi- 
ents and  of  the  composition,  sufficient  in  quantity  for  the  pur- 
pose of  experiment. 

Sec.  29.  A7id  be  it  further  enacted,  That  in  all  cases  which 
admit  of  representation  by  model,  the  applicant,  if  required  by 


81 


the  Commissioner,  shall  furnish  one  of  convenient  size  to  ex- 
hibit advantageously  the  several  parts  of  his  invention  or  dis- 
covery. 

Sec.  30.  And  be  it  further  enacted,  That  the  applicant  shall 
make  oath  or  affirmation  that  he  does  verily  believe  himself  to 
be  the  original  and  first  inventor  or  discoverer  of  the  art,  ma- 
chine, manufacture,  composition,  or  improvement  for  which  he 
solicits  a  patent;  that  he  does  not  know  and  does  not  believe 
that  the  same  "was  ever  before  known  or  used  ;  and  shall  state 
of  what  country  he  is  a  citizen.  And  said  oath  or  affirmation 
may  be  made  before  any  person  within  the  United  States  au- 
thorized by  law  to  administer  oaths,  or  when  the  applicant 
resides  in  a  foreign  country,  before  any  minister,  charge 
d'affaires,  consul,  or  commercial  agent,  holding  comimission 
under  the  government  of  the  United  States,  or  before  any 
notary  public  of  the  foreign  country  in  which  the  applicant 
may  be. 

Sec.  31.  And  be  it  further  enacted,  That  on  filing  of  any  such 
application  and  the  payment  of  the  duty  required  by  law,  the 
Commissioner  shall  cause  an  examination  to  be  made  of  the 
alleged  new  invention  or  discovery  ;  and  if  on  such  examina- 
tion it  shall  appear  that  the  claimant  is  justly  entitled  to  a 
patent  under  the  law,  and  that  the  same  is  sufficiently  useful 
and  important,  the  Commissioner  shall  issue  a  patent  therefor. 

Sec.  32.  And  be  it  further  enacted,  That  all  applications  for 
patents  shall  be  completed  and  prepared  for  examination  within 
two  years  after  the  filing  of  the  petition,  and  in  default  thereof, 
or  upon  failure  of  the  applicant  to  prosecute  the  same  within 
two  years  after  any  action  therein,  of  which  notice  shall  have 
been  given  to  the  applicant,  they  shall  be  regarded  as  abandoned 
by  the  parties  thereto,  unless  it  be  shown  to  the  satisfaction  of 
the  Commissioner  that  such  delay  was  unavoidable. 

Sec.  33.  And  be  it  further  enacted,  That  patents  may  be 
granted  and  issued  or  reissued  to  the  assignee  of  the  inventor, 
or  discoverer,  the  assignment  thereof  being  first  entered  of 
record  in  the  Patent  Office ;  but  in  such  case  the  application  for 
the  patent  shall  be  made  and  the  specification  sworn  to  by  the 
inventor  or  discoverer;  and  also,  if  he  be  living,  in  case  of  an 
application  for  reissue. 

11 


82 

Sec.  34.  And  be  it  Jurther  enacted,  That  when  any  person, 
having  made  any  new  invention  or  discovery  for  which  a 
patent  might  have  been  granted,  dies  before  a  patent  is  granted, 
the  right  of  applying  for  and  obtaining  the  patent  shall  devolve 
on  his  executor  or  administrator,  in  trust  for  the  heirs-at-law  of 
the  deceased,  in  case  he  shall  have  died  intestate  ;  or  if  he  shall 
have  left  a  will,  disposing  of  the  same,  then  in  trust  for  his 
devisees,  in  as  full  manner  and  on  the  same  terms  and  condi- 
tions as  the  same  might  have  been  claimed  or  enjoyed  by  him 
in  his  lifetime ;  and  when  the  application  shall  be  made  by  such 
legal  representatives,  the  oath  or  affirmation  required  to  be 
made  shall  be  so  varied  in  form  that  it  can  be  made  by  them. 

Sec.  35.  And  he  it  further  enacted,  That  any  person  who  has 
ian  interest  in  an  invention  or  discovery,  whether  as  inventor, 
discoverer,  or  assignee,  for  which  a  patent  was  ordered  to  issue 
upon  the  payment  of  the  final  fee,  but  who  has  failed  to  make 
payment  thereof  within  six  months  from  the  time  at  which  it 
was  passed  and  allowed,  and  notice  thereof  was  sent  to  the  ap- 
plicant or  his  agent,  shall  have  a  right  to  make  an  application 
for  a  patent  for  such  invention  or  discovery  the  same  as  in  the 
case  of  an  original  application :  Provided,  That  the  second  ap- 
plication be  made  within  two  years  after  the  allowance  of  the 
original  application.  But  no  person  shall  be  held  responsible 
in  damages  for  the  manufacture  or  use  of  any  article  or  thing 
for  which  a  patent,  as  aforesaid,  was  ordered  to  issue,  prior  to 
the  issue  thereof:  Provided,  That  when  an  application  for  a 
patent  has  been  rejected  or  withdrawn,  prior  to  the  passage  of 
this  act,  the  applicant  shall  have  six  months  from  the  date  of 
such  passage  to  renew  his  application,  or  to  file  a  new  one  ;  and 
if  he  omits  to  do  either,  his  application  shall  be  held  to  have 
been  abandoned  ;  upon  the  hearing  of  such  applications  aban- 
donment shall  be  considered  as  a  question  of  fact. 

Sec.  36.  And  be  it  further  enacted,  That  every  patent  or  any 
interest  therein  shall  be  assignable  in  law,  by  an  instrument  in 
writing  ;  and  the  patentee  or  assigns  or  legal  representative 
may  in  like  manner,  grant  and  convey  an  exclusive  right  under 
his  patent  to  the  whole  or  any  specified  part  of  the  United 
States ;  and  said  assignment,  grant,  or  conveyance  shall  be 
void  as  against  any  subsequent  purchaser  or  mortgagee  for  a 
valuable  consideration,  without  notice,  unless  it  is  recorded  in 
the  Patent  Office  within  three  months  from  the  date  thereof. 


83 

Sec.  37.  And  be  it  further  enacted,  That  every  person  who 
may  have  purchased  of  the  inventor,  or  with  his  knowledge  and 
consent  may  have  constructed,  any  newly  invented  or  discov- 
ered machine,  or  other  patentable  article,  prior  to  the  applica- 
tion by  the  inventor  or  discoverer  for  a  patent,  or  sold,  or  used 
one  so  constructed,  shall  have  the  right  to  use,  and  vend  to 
others  to  be  used,  the  specific  thing  so  made  or  purchased, 
without  liabilit}'  therefor. 

Sec.  38.  And  be  it  further  enacted.  That  it  shall  be  the  duty 
of  all  patentees,  and  their  assigns  and  legal  representatives,  and 
of  all  persons  making  or  vending  any  patented  article  for  or 
under  them,  to  give  sufficient  notice  to  the  public  that  the  same 
is  patented,  either  by  fixing  thereon  the  word  "patented,"  to- 
gether with  the  day  and  year  the  patent  was  granted  ;  or  when, 
from  the  character  of  the  article,  this  cannot  be  done,  by  fixing 
to  it  or  to  the  package  wherein  one  or  more  of  them  is  inclosed, 
a  label  containing  the  like  notice  ;  and  in  any  suit  for  infringe- 
ment, by  the  party  failing  so  to  mark,  no  damage  shall  be  re- 
covered by  the  plaintiff,  except  on  proof  that  the  defendant  was 
duly  notified  of  the  infringement,  and  continued,  after  such 
notice,  to  make,  use,  or  vend  the  article  so  patented. 

Sec.  39.  And  be  it  further  enacted,  That  if  any  person  shall, 
in  any  manner,  mark  upon  anything  made,  used,  or  sold  by 
him  for  which  he  has  not  obtained  a  patent,  the  name  or  any 
imitation  of  the  name  of  any  person  who  has  obtained  a  patent 
therefor,  without  the  consent  of  such  patentee  or  his  assigns 
or  legal  representatives ;  or  shall,  in  any  manner,  mark  upon 
or  affix  to  any  such  patented  article  the  word  "patent"  or 
"patentee,"  or  the  words  "letters-patent,  "or  any  word  of  like 
import,  with  intent  to  imitate  or  counterfeit  the  mark  or  device 
of  the  patentee,  without  having  the  license  or  consent  of  such 
patentee  or  his  assigns  or  legal  representatives  ;  or  shall,  in  any 
manner,  mark  upon  or  affix  to  any  unpatented  article  the  word 
"patent,"  or  any  word  importing  that  the  same  is  patented,  for 
the  purpose  of  deceiving  the  public,  he  shall  be  liable  for  every 
such  offence  to  a  penalty  of  not  less  than  one  hundred  dollars, 
with  costs;  one  moiety  of  said  penalty  to  the  person  who  shall 
sue  for  the  same,  and  the  other  to  the  use  of  the  United  States, 
to  be  recovered  by  suit  in  any  district  court  of  the  United 
States  within  whose  jurisdiction  such  offence  may  have  been 
committed. 


84 

Sec.  40.  And  be  it  further  enacted,  That  any  citizen  of  the 
United  States,  who  shall  have  made  any  new  invention  or  dis- 
covery, and  shall  desire  further  time  to  mature  the  same,  may, 
on  payment  of  the  duty  required  by  law,  file  in  the  Patent  Office 
a  caveat  setting  forth  the  design  thereof,  and  of  its  distinguish- 
ing characteristics,  and  praying  protection  of  his  right  until 
he  shall  have  matured  his  invention  ;  and  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office  and  preserved  in 
secrecy,  and  shall  be  operative  for  the  term  of  one  year  from 
the  filing  thereof,  and  if  application  shall  be  made  within  the 
year  by  any  other  person  for  a  patent  with  which  such  caveat 
would  in  any  manner  interfere,  the  Commissioner  shall  deposit 
the  description,  specification,  drawings,  and  model  of  such  ap- 
plication in  like  manner  in  the  confidential  archives  of  the 
office,  and  give  notice  thereof,  by  mail,  to  the  person  filing  the 
caveat,  who,  if  he  would  avail  himself  of  his  caveat,  shall  file 
his  description,  specification,  drawings,  and  model  within  three 
months  from  the  time  of  placing  said  notice  in  the  post  office 
in  Washington,  with  the  usual  time  required  for  transmitting 
it  to  the  caveator  added  thereto,  which  time  shall  be  indorsed 
on  the  notice.  And  an  alien  shall  have  the  privilege  herein 
granted,  if  he  shall  have  resided  in  the  United  States  one  year 
next  preceding  the  filing  of  his  caveat,  and  made  oath  of  his 
intention  to  become  a  citizen. 

Skc.  41.  And  be  it  further  enacted^  That  whenever  on  exami- 
nation, any  claim  for  a  patent  is  rejected  for  any  reason  what- 
ever, the  Commissioner  shall  notify  the  applicant  thereof,  giving 
him  briefly  the  reasons  for  such  rejection,  together  with  such 
information  and  references  as  may  be  useful  in  judging  of  the 
propriety  of  renewing  his  application  or  of  altering  his  specifi- 
cation ;  and  if,  after  receiving  such  notice,  the  applicant  shall 
persist  in  his  claim  for  a  patent,  with  or  without  altering  his 
specifications,  the  Commissioner  shall  order  a  re-examination 
of  the  case. 

Sec.  42.  And  be  it  further  enacted.  That  whenever  an  appli- 
cation is  made  for  a  patent  which,  in  the  opinion  of  the  Com- 
missioner, would  interfere  with  any  pending  application,  or  with 
any  unexpired  patent,  he  shall  give  notice  thereof  to  the  appli- 
cants, or  applicant  and  patentee,  as  the  case  may  be,  and  shall 
direct  the  primary  examiner  to  proceed  to  determine  the  ques- 


85 

tion  of  priority  of  invention.  And  the  Commissioner  may  issue 
a  patent  to  the  party  who  shall  be  adjudged  the  prior  inventor, 
unless  the  adverse  party  shall  appeal  from  the  decision  of  the 
primary  examiner,  or  of  the  board  of  examiners-in-chief,  as  the 
case  may  be,  within  such  time,  not  less  than  twenty  days,  as  the 
Commissioner  shall  prescribe. 

Sec.  43.  And  be  it  further  enacted,  That  the  Commissioner 
may  establish  rules  for  taking  affidavits  and  depositions  required 
in  cases  pending  in  the  Patent  Office,  and  such  affidavits  and  de- 
positions may  be  taken  before  any  officer  authorized  by  law  to 
take  depositions  to  be  used  in  the  courts  of  the  United  States, 
or  of  the  State  where  the  officer  resides. 

Skc.  44.  And  he  it  further  enacted,  That  the  clerk  of  any  court 
of  the  United  States,  for  any  district  or  Territory  wherein  tes- 
timony is  to  be  taken  for  use  in  any  contested  case  pending  in 
the  Patent  Office,  shall,  upon  the  application  of  any  party 
thereto,  or  his  agent  or  attorney,  issue  subpoena  for  any  witness 
residing  or  being  within  said  district  or  Territory,  command- 
ing him  to  appear  and  testify  before  any  officer  in  said  district 
or  Territory  authorized  to  take  depositions  and  affidavits,  at 
any  time  and  place  in  the  subpoena  stated  ;  and  if  any  witness, 
after  being  duly  served  with  such  subpoena,  shall  neglect  or  re- 
fuse to  appear,  or  after  appearing  shall  refuse  to  testify,  the 
judge  of  the  court  whose  clerk  issued  the  subpoena  may,  on  proof 
of  such  neglect  or  refusal,  enforce  obedience  to  the  process,  or 
punish  the  disobedience  as  in  other  like  cases. 

Sec.  45.  And  he  it  further  enacted.  That  every  witness  duly 
subpoenaed  and  in  attendance  shall  be  allowed  the  same  fees  as 
are  allowed  to  witnesses  attending  the  courts  of  the  United 
States,  but  no  witness  shall  be  required  to  attend  at  any  place 
more  than  forty  miles  from  the  place  where  the  subpoena  is 
served  upon  him,  nor  be  deemed  guilty  of  contempt  for  disobey- 
ing such  subpoena,  unless  his  fees  and  travelling  expenses  in  going 
to,  returning  from,  and  one  day's  attendance  at  the  place  of  exam- 
ination, are  paid  or  tendered  him  at  the  time  of  the  service  of  the 
subpoena ;  nor  for  refusing  to  disclose  any  secret  invention  or 
discovery  made  or  owned  by  himself. 

Sec.  46.  And  be  it  further  enacted.  That  every  applicant  for 
a  patent  or  the  reissue  of  a  patent,  any  of  the  claims  of  which 


86 

have  been  twice  rejected,  and  every  party  to  an  interference, 
may  appeal  from  the  decision  of  the  primary  examiner,  or  of  the 
examiner  in  charge  of  interference,  in  such  case,  to  the  board  of 
examiners-in-chief,  having  once  paid  the  fee  for  such  appeal 
provided  by  law. 

Sec.  47.  And  be  it  further  enacted,  That  if  such  party  is  dis- 
satisfied with  the  decision  of  the  examiners-in-chief,  he  may,  on 
payment  of  the  duty  required  by  law,  appeal  to  the  Commis- 
sioner in  person. 

Sec.  48.  A7id  he  it  further  enacted,  That  if  such  party,  except 
a  party  in  interference,  is  dissatisfied  with  the  decision  of  the 
Commissioner,  he  may  appeal  to  the  Supreme  Court  of  the  Dis- 
trict of  Columbia,  sitting  in  banc. 

Sec.  49.  And  he  it  further  enacted,  That  when  an  appeal  is 
taken  to  the  Supreme  Court  of  the  District  of  Columbia,  the 
appellant  shall  give  notice  thereof  to  the  Commissioner,  and 
file  in  the  Patent  OflBce,  within  such  time  as  the  Commissioner 
shall  appoint,  his  reasons  of  appeal,  specifically  set  forth  in 
writing. 

Sec.  50.  And  be  it  further  enacted.  That  it  shall  be  the  duty 
of  said  court,  on  petition,  to  hear  and  determine  such  appeal, 
and  to  revise  the  decision  appealed  from  in  a  summary  way,  on 
the  evidence  produced  before  the  Commissioner,  at  such  early 
and  conyenient  time  as  the  court  may  appoint,  notifying  the 
Commissioner  of  the  time  and  place  of  hearing ;  and  the  re- 
vision shall  be  confined  to  the  points  set  forth  in  the  reasons  of 
appeal.  And  after  hearing  the  case,  the  court  shall  return  to 
the  Commissioner  a  certificate  of  its  proceedings  and  decision, 
which  shall  be  entered  of  record  in  the  Patent  Office,  and  govern 
the  further  proceedings  in  the  case.  But  no  opinion  or  decision 
of  the  court  in  any  such  case  shall  preclude  any  person  inter- 
ested from  the  right  to  contest  the  validity  of  such  patent  in 
any  court  wherein  the  same  may  be  called  in  question. 

Sec.  51.  And  be  it  further  enacted.  That  on  receiving  notice 
of  the  time  and  place  of  hearing  such  appeal,  the  Commissioner 
shall  notify  all  parties  who  appear  to  be  interested  therein,  in 
such  manner  as  the  court  may  prescribe.  The  party  appealing 
shall  lay  before  the  court  certified  copies  of  all  the  original  pa- 
pers and  evidence  in  the  case,  and  the  Commissioner  shall  fur- 


87 

nish  it  with  the  grounds  of  his  decision,  fully  set  forth  in  writ- 
ing, touching  all  the  points  involved  by  the  reasons  of  appeal. 
And  at  the  request  of  any  party  interested,  or  of  the  court,  the 
Commissioner  and  the  examiners  may  be  examined  under  oath, 
in  explanation  of  the  principles  of  the  machine  or  other  thing 
for  which  a  patent  is  demanded. 

Sec.  52.  And  be  it  further  enacted,  That  whenever  a  patent 
on  application  is  refused,  for  any  reason  whatever,  either  by  the 
Commissioner  or  by  the  Supreme  Court  of  the  District  of  Co- 
lumbia upon  appeal  from  the  Commissioner,  the  applicant  may 
have  remedy  by  bill  in  equity  ;  and  the  court  having  cognizance 
thereof,  on  notice  to  adverse  parties  and  other  due  proceedings 
had,  may  adjudge  that  such  applicant  is  entitled,  according  to 
law,  to  receive  a  patent  for  his  invention,  as  specified  in  his 
claim,  or  for  any  part  thereof,  as  the  facts  in  the  case  may  ap- 
pear. And  such  adjudication,  if  it  be  in  favor  of  the  right  of 
the  applicant,  shall  authorize  the  Commissioner  to  issue  such 
patent,  on  the  applicant  filing  in  the  Patent  Ofiice  a  copy  of  the 
adjudication,  and  otherwise  complying  with  the  requisitions  of 
law.  And  in  all  cases  where  there  is  no  opposing  party  a  copy 
of  the  bill  shall  be  served  on  the  Commissioner,  and  all  the  ex- 
penses of  the  proceeding  shall  be  paid  by  the  applicant,  whether 
the  final  decision  is  in  his  favor  or  not. 

Sec.  53.  And  be  it  further  enacted,  That  whenever  any  patent 
is  inoperative  or  invalid,  by  reason  of  a  defective  or  insufficient 
specification,  or  by  reason  of  the  patentee  claiming  as  his  own 
invention  or  discovery  more  than  he  had  a  right  to  claim  as 
new,  if  the  error  has  arisen  by  inadvertence,  accident,  or  mis- 
take, and  without  any  fraudulent  or  deceptive  intention,  the 
Commissioner  shall,  on  the  surrender  of  such  patent,  and  the 
payment  of  the  duty  required  by  law,  cause  a  new  patent  for 
the  same  invention,  and  in  accordance  with  the  corrected  speci- 
fications, to  be  issued  to  the  patentee,  or,  in  the  case  of  his 
death  or  assignment  of  the  whole  or  any  undivided  part  of  the 
original  patent,  to  his  executors,  administrators,  or  assigns,  for 
the  unexpired  part  of  the  term  of  the  original  patent  the  sur- 
render of  which  shall  take  effect  upon  the  issue  of  the  amended 
patent ;  and  the  Commissioner  may,  in  his  discretion,  cause 
several  patents  to  be  issued  for  distinct  and  separate  parts  of  the 
thing  patented,  upon  demand  of  the  applicant,  and  upon  pay- 


88 

ment  of  the  required  fee  for  a  reissue  for  each  of  such  reissued 
letters-patent.  And  the  specification  and  claim  in  every  such 
case  shall  be  subject  to  revision  and  restriction,  in  the  same 
manner  as  original  applications  are.  And  the  patent  so  reissued, 
together  with  the  corrected  specification,  shall  have  the  effect 
and  operation  in  law,  on  the  trial  of  all  actions  for  causes  there- 
after arising,  as  though  the  same  had  been  originally  filed  in 
such  corrected  form ;  but  no  new  matter  shall  be  introduced 
into  the  specification,  nor  in  case  of  a  machine  patent  shall  the 
model  or  drawings  be  amended  except  each  by  the  other,  but 
when  there  is  neither  model  nor  drawing,  amendments  may  be 
made  upon  proof  satisfactory  to  the  Commissioner  that  such 
new  matter  or  amendment  was  a  part  of  the  original  invention, 
and  was  omitted  from  the  specification  by  inadvertence,  acci- 
dent, or  mistake,  as  aforesaid. 

Sec.  54.  And  be  it  further  enacted,  That  whenever,  through 
inadvertence,  accident,  or  mistake,  and  without  any  fraudulent 
or  deceptive  intention  a  patentee  has  claimed  more  than  that  of 
which  he  was  the  original  or  first  inventor  or  discoverer,  bis 
patent  shall  be  valid  for  all  that  part  which  is  truly  and  justly 
his  own,  provided  the  same  is  a  material  or  substantial  part  of 
the  thing  patented ;  and  any  such  patentee,  his  heirs  or  assigns, 
whether  of  the  whole  or  any  sectional  interest  therein,  may,  on 
payment  of  the  duty  required  by  law,  make  disclaimer  of  such 
parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or  to 
hold  by  virtue  of  the  patent  or  assignment,  stating  therein  the 
extent  of  his  interest  in  such  patent ;  said  disclaimer  shall  be 
in  writing,  attested  by  one  or  more  witnesses,  and  recorded  in 
the  Patent  Office,  and  it  shall  thereafter  be  considered  as  part 
of  the  original  specification  to  the  extent  of  the  interest  pos- 
sessed by  the  claimant  and  by  those  claiming  under  him  after 
the  record  thereof.  But  no  such  disclaimer  shall  affect  any 
action  pending  at  the  time  of  its  being  filed,  except  so  far  as 
may  relate  to  the  question  of  unreasonable  neglect  or  delay  in 
filing  it. 

Sec.  65.  And  be  it  further  enacted,  That  all  actions,  suits, 
controversies,  and  cases  arising  under  the  patent  laws  of  the 
United  States  shall  be  originally  cognizable,  as  well  in  equity 
as  at  law,  by  the  Circuit  Courts  of  the  United  States,  or  any 
District  Court  having  the  powers  and  jurisdiction  of  a  Circuit 


89 

Court,  or  by  the  Supreme  Court  of  the  District  of  Columbia  or 
of  any  Territory ;  and  the  court  shall  have  power,  upon  bill  in 
equity,  filed  by  any  party  aggrieved,  to  grant  injunctions  ac- 
cording to  the  course  and  principles  of  courts  of  equity,  to  pre- 
vent the  violation  of  any  right  secured  by  patent,  on  such  terms 
as  the  court  may  deem  reasonable ;  and  upon  a  decree  being  ren- 
dered in  Any  .such  case  for  an  infringement,  the  complainant 
shall  be  entitled  to  recover  in  addition  to  the  profits  to  be  ac- 
counted for  by  the  defendant,  the  damages  the  complainant  has 
sustained  thereby,  and  the  court  shall  assess  the  same,  or  cause 
the  same  to  be  assessed  under  its  direction,  and  the  court  shall 
have  the  same  powers  to  increase  the  same,  in  its  discretion, 
that  are  given  by  said  act  to  increase  the  damages  found  by  ver- 
dicts in  actions  upon  thescase;  but  all  actions  shall  be  brought 
during  the  term  for  which  the  letters-patent  shall  be  granted  or 
extended,  or  within  ^ix  years  after  the  expiration  thereof. 

Skc.  56.  And  be  it  further  enacted,  That  a  writ  of  error  or  ap- 
peal to  the  Supreme  Court  of  the  United  States  shall  lie  from 
all  judgments  and  decrees  of  any  Circuit  Court,  or  of  any  Dis- 
trict Court  exercising  the  jurisdiction  of  a  Circuit  Court,  or  of 
the  Supreme  Court  of  the  District  of  Columbia,  or  of  any  Ter- 
ritory, in  any  action,  suit,  controversy,  or  case,  at  law  or  in 
equity,  touching  patent  rights,  in  the  same  manner  and  under 
the  same  circumstances  as  in  other  judgments  and  decrees  of 
such  Circuit  Courts,  without  regard  to  sum  or  value  in  contro- 
versy. 

Skc.  57.  And  be  it  further  enacted,  That  written  or  printed 
copies  of  any  records,  books,  papers,  or  drawings,  belonging  to 
the  Patent  Office,  and  of  letters-patent  under  the  signature  of 
the  Commissioner,  or  acting  commissioner,  with  the  seal  of 
office  affixed,  shall  be  competent  evidence  in  all  cases  wherein 
the  originals  could  be  evidence,  and  any  person  making  appli- 
cation therefor,  and  paying  the  fee  required  by  law,  shall  have 
certified  copies  thereof.  And  copies  of  the  specifications  and 
drawings  of  foreign  letters-patent,  of  record  in  the  Patent 
Office,  certified  in  like  manner,  shall  he  prima  facie  evidence  of 
the  fact  of  the  granting  of  such  foreign  letters-patent,  and  of 
the  date  and  contents  thereof. 

Sec.  58.  And  be  it  further  enacted,  That  whenever  there  shall 
be  interfering  patents,  any  person  interested  in  any  one  of  such 

12 


90 


interfering  patents,  or  in  the  working  of  the  invention  claimed 
under  either  of  Ruch  patents,  may  have  relief  against  the  inter- 
fering patentee  and  all  parties  interested  under  him  hy  suit  in 
equity  against  the  owners  of  the  interfering  patent ;  and  the 
court  having  cognizance  thereof,  as  hereinbefore  provided,  on 
notice  to  adverse  parties,  and  other  due  proceedings  had,  accord- 
ing to  the  course  of  equity,  may  adjudge  and  declare  either  of 
the  patents  void  in  whole  or  in  part,  or  inoperative,  or  invalid 
in  any  particular  part  of  the  United  States,  according  to  the  in- 
terest of  the  parties  in  the  patent  or  the  invention  patented. 
But  no  such  judgment  or  adjudication  shall  affect  the  rights  of 
any  person,  except  the  parties  to  the  suit  and  those  deriving 
title  under  them  subsequent  to  the  rendition  of  such  judgment. 

Sec.  59.  And  be  it  further  enacted,  That  damages  for  the  in- 
fringement of  any  patent  may  be  recovered  by  action  on  the 
case  in  any  Circuit  Court  of  the  United  States,  or  District 
Court  exercising  the  jurisdiction  of  a  Circuit  Court,  or  in  the 
Supreme  Court  of  the  District  of  Columbia,  or  of  any  Terri- 
tory, in  the  name  of  the  party  interested,  either  as  patentee,  as- 
signee, or  grantee.  And  whenever  in  any  such  action  a  verdict 
shall  be  rendered  for  the  plaintiff,  the  Court  may  enter  judg- 
ment thereon  for  any  sum  above  the  amount  found  by  the  ver- 
dict as  the  actual  damages  sustained,  according  to  the  circum- 
stances of  the  case,  not  exceeding  three  times  the  amount  of 
such  verdict,  together  with  the  costs. 

Sec.  60.  And  be  it  further  enacted,  That  whenever,  through 
inadvertence,  accident,  or  mistake,  and  without  any  wilful  de- 
fault or  intent  to  defraud  or  mislead  the  public,  a  patentee  shall 
have,  in  his  specification,  claimed  to  be  the  original  and  first 
inventor  or  discoverer  of  any  material  or  substantial  part  of  the 
thing  patented,  of  which  he  was  not  the  original  and  first  in- 
ventor or  discoverer,  as  aforesaid,  every  such  patentee,  his  ex- 
ecutors, administrators,  and  assigns,  whether  of  the  whole  or 
any  sectional  interest  in  the  patent,  may  maintain  a  suit  at  law 
or  in  equity,  for  the  infringement  of  anj'  part  thereof,  which 
was  bond  fide  his  own,  provided  it  shall  be  a  material  and  sub- 
stantial part  of  the  thing  patented,  and  be  definitely  distinguish- 
able from  the  parts  so  claimed,  without  right  as  aforesaid,  not- 
withstanding the  specifications  may  embrace  more  than  that  of 
which  the  patentee  was  the  original  or  first  inventor  or  dis- 


91 

coverer.  But  in  every  such  case  in  which  a  judgment  or  decree 
shall  be  rendered  for  the  plaintiff,  no  costs  shall  be  recovered, 
unless  the  proper  disclaimer  has  been  entered  at  the  Patent 
Office  before  the  commencement  of  the  suit ,  nor  shall  he  be  en- 
titled to  the  benefits  of  this  section,  if  he  shall  have  unreason- 
ably neglected  or  delayed  to  enter  said  disclaimer. 

Skc.  61.  And  be  it  further  enacted,  That  in  any  action  for  in- 
fringement the  defendant  may  plead  the  general  issue,  and 
having  given  notice  in  writing  to  the  plaintiff  or  his  attorney, 
thirty  days  before,  may  prove,  on  trial,  any  one  or  more  of  the 
following  special  "matters : 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee  in  the  Patent 
Office  was  made  to  contain  less  than  the  whole  truth  relative  to 
his  invention  or  discovery,  or  more  than  is  necessary  to  pro- 
duce the  desired  effect;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained  the 
patent  for  that  which  was  in  fact  invented  by  another,  who 
was  using  reasonable  diligence  in  adapting  and  perfecting  the 
same;  or, 

Third.  That  it  had  been  patented  or  described  in  some  printed 
publication  prior  to  his  supposed  invention  or  discovery  thereof; 
or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 
country,  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the  names 
of  patentees  and  the  dates  of  their  patents,  and  when  granted, 
and  the  names  and  residences  of  the  persons  alleged  to  have  in- 
vented, or  to  have  had  the  prior  knowledge  of  the  thing  pat- 
ented, and  where  and  by  whom  it  had  been  used ;  and  if  any 
one  or  more  of  the  special  matters  alleged  shall  be  found  for 
the  defendant,  judgment  shall  be  rendered  for  him,  with  costs. 
And  the  like  defences  may  be  pleaded  in  any  suit  in  equity  for 
relief  against  an  alleged  infringement;  and  proofs  of  the  same 
may  be  given  upon  like  notice  in  the  answer  of  the  defendant, 
and  with  the  like  effect. 


92 

Skct.  62.  And  be  it  further  enacted,  That  whenever  it  shall 
appear  that  the  patentee,  at  the  time  of  making  his  application 
for  the  patent,  believed  himself  to  bo  the  original  and  first  in- 
ventor or  discoverer  of  the  thing  patented,  the  same  shall  not 
be  held  to  be  void  on  account  of  the  invention  or  discovery,  or 
any  part  thereof,  having  been  known  or  used  in  a  foreign 
country,  before  his  invention  or  discovery  thereof,  if  it  had  not 
been  patented,  or  described  in  a  printed  publication. 

Sec.  63.  And  be  it  further  enacted,  That  where  the  patentee 
of  any  invention  or  discovery,  the  patent  for  which  was  granted 
prior  to  the  second  day  of  March,  eighteen  hundred  and  sixty- 
one,  shall  desire  an  extension  of  his  patent  beyond  the  original 
term  of  its  limitation,  he  shall  make  application  therefor,  in 
writing,  to  the  Commissioner,  setting  forth  the  reasons  why 
such  extension  should  be  granted  ;  and  he  shall  also  furnish  a 
written  statement  under  oath  of  the  ascertained  value  of  the  in- 
vention or  discovery,  and  of  his  receipts  and  expenditures  on 
account  thereof,  sufficiently  in  detail  to  exhibit  a  true  and  faith- 
ful account  of  the  loss  and  profit  in  any  manner  accruing  to  him 
by  reuson  of  said  invention  or  discovery.  And  said  application 
shall  be  filed  not  more  than  six  months  nor  less  than  ninety 
days  before  the  expiration  of  the  original  term  of  the  patent, 
and  no  extension  shall  be  granted  after  the  expiration  of  said 
original  term. 

Skc.  64.  And  be  it  further  enacted.  That  upon  the  receipt  of 
such  application,  and  the  payment  of  the  duty  required  by  law, 
the  Commissioner  shall  cause  to  be  published  in  one  newspaper 
in  the  city  of  Washington,  and  in  such  other  papers  published 
in  the  section  of  the  country  most  interested  adversely  to  the 
extension  of  the  patent  as  he  may  deem  proper,  for  at  least 
sixty  days  prior  to  the  day  set  for  hearing  the  case,  a  notice  of 
such  application,  and  of  the  time  and  place  when  and  where  the 
same  will  be  considered,  that  any  person  may  appear  and  show 
cause  why  the  extension  should  not  be  granted. 

Skc.  65,  And  be  it  further  enacted,  That  on  the  publication  of 
such  notice,  the  Commissioner  shall  refer  the  case  to  the  prin- 
cipal examiner  having  charge  of  the  class  of  inventions  to 
which  it  belongs,  who  shall  make  to  said  Commissioner  a  full 
report  of  the  case,  and  particularly  whether  the  invention  or 
discovery  was  new  and  patentable  when  the  original  patent  was 
granted. 


93 

Sec.  66.  And  be  it  further  enacted,  That  the  Commissioner 
shall,  at  the  time  and  place  designated  in  the  published  notice, 
hear  and  decide  upon  the  evidence  produced,  both  for  and 
against  the  extension ;  and  if  it  shall  appear  to  his  satisfaction 
that  the  patentee,  without  neglect  or  fault  on  his  part,  has 
failed  to  obtain  from  the  use  and  sale  of  his  invention  or  dis- 
covery a  reasonable  remuneration  for  the  time,  ingenuity,  and 
expense  bestowed  upon  it,  and  the  introduction  of  it  into  use, 
and  that  it  is  just  and  proper,  having  due  regard  to  the  public 
interest,  that  the  term  of  the  patent  should  be  extended,  the 
said  Commissioner  shall  make  a  certificate  thereon,  renewing 
and  extending  the  said  patent  for  the  term  of  seven  years  from 
the  expiration  of  the  first  term,  which  certificate  shall  be  re- 
corded in  the  Patent  Office,  and  thereupon  the  said  patent  shall 
have  the  same  effect  in  law  as  though  it  had  been  originally 
granted  for  twenty-one  years. 

Sec.  67.  And  be  it  further  enacted,  That  the  benefit  of  the  ex- 
tension of  a  patent  shall  extend  to  the  assignees  and  grantees  of 
the  right  to  use  the  thing  patented  to  the  extent  of  their  in- 
terest therein. 

Sec.  68.  And  be  it  further  enacted,  That  the  following  shall 
be  the  rates  for  patent  fees  : 

On  filing  each  original  application  for  a  patent,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty  dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  Com- 
missioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents  per 
hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 


.94 

Sec.  69.  And  be  it  further  enacted,  That  patent  fees  may  be 
paid  to  the  Commissioner,  or  to  the  Treasurer  or  any  of  the 
assistant  treasurers  of  the  United  States,  or  to  any  of  the 
designated  depositaries,  national  banks,  or  receivers  of  public 
money,  designated  by  the  Secretary  of  the  Treasury  for  tliat 
purpose,  who  shall  give  the  depositor  a  receipt  or  certificate  of 
deposit  therefor.  And  all  money  received  at  the  Patent  OflQce, 
for  any  purpose,  or  from  any  source  whatever,  shall  be  paid 
into  the  treasury  as  received,  without  any  deduction  whatever  ; 
and  all  disbursements  for  said  office  shall  be  made  by  the  dis- 
bursing clerk  of  the  Interior  Department. 

Sec.  70.  And  be  it  further  enacted,  That  the  Treasurer  of  the 
United  States  is  authorized  to  pay  back  any  sum  or  sums  of 
money  to  any  person  who  shall  have  paid  the  same  into  the 
treasury,  or  to  any  receiver  or  depositary,  to  the  credit  of  the 
Treasurer,  as  for  fees  accruing  at  the  Patent  Office,  through  mis- 
take, certificate  thereof  being  made  to  said  Treasurer  by  the 
Commissioner  of  Patents. 


95 


Photisioks  of  the  Act  or  July  Sth,  1870,  A3  to 

Designs. 

Sec.  71.  And  be  it  further  enacted,  That  any  person  who,  by 
his  own  industry,  genius,  efforts,  and  expense,  has  invented  or 
produced  any  now  and  original  design  for  a  manufacture,  bust, 
statue,  alto-relievo,  or  bas-relief;  any  new  and  original  design 
for  the  printing  of  woollen,  silk,  cotton,  or  other  fabrics;  any 
new  and  original  impression,  ornament,  pattern,  print,  or  pic- 
ture, to  be  printed,  painted,  cast,  or  otherwise  placed  on  or 
worked  into  any  article  of  manufacture ;  or  any  new,  useful, 
and  original  shape  or  configuration  of  any  article  of  manufac- 
ture, the  same  not  having  been  known  or  used  by  others  before 
his  invention  or  production  thereof,  or  patented  or  described  in 
any  printed  publication,  may,  upon  payment  of  the  duty  re- 
quired by  law,  and  other  due  proceedings  had  the  same  as  in 
cases  of  invention  or  discoveries,  obtain  a  patent  therefor. 

Sec.  72.  And  be  it  further  enacted.  That  the  Commigsioner 
may  dispense  with  models  of  designs  when  the  design  can  be 
sufficiently  represented  by  drawings  or  photographs. 

Sec.  73.  And  be  it  further  enacted,  That  patents  for  designs 
may  be  granted  for  the  term  of  three  years  and  six  months,  or 
for  seven  years,  or  for  fourteen  years,  as  the  applicant  may  in 
his  application  elect. 

•  Sec.  74.  And  be  it  further  enacted,  That  patentees  of  designs 
issued  prior  to  March  two,  eighteen  hundred  and  sixty-one,  shall 
be  entitled  to  the  extension  of  their  respective  patents  for  the 
term  of  seven  years,  in  the  same  manner  and  under  the  same 
restrictions  as  are  provided  for  the  extension  of  patents  for  in- 
ventions or  discoveries,  issued  prior  to  the  second  day  of  March, 
eighteen  hundred  and  sixty -one. 

Sec.  75.  And  be  it  further  enacted.  That  the  following  shall 
be  the  rates  of  fees  in  design  cases  : 

For  three  years  and  six  months,  ten  dollars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same  rates 
as  in  cases  of  inventions  or  discoveries. 


96 

Sec.  76.  And  be  it  further  enacted,  That  all  the  regulations 
and  provisions  which  apply  to  the  obtaining  or  protection  of 
patents  for  inventions  or  discoveries,  not  inconsistent  with  the 
provisions  of  this  act,  shall  apply  to  patents  for  designs. 


97 


PSOYISIOKS  OF  THE   ACT   OF  .TULT  8tH,   1870,   AS  TO 

Trade-Marks. 

Sec.  77.  And  be  it  further  enacted,  That  any  person  or  firm 
domiciled  in  the  United  States,  and  any  corporation  created  hy 
the  authority  of  the  United  States,  or  of  any  State  or  Terri- 
tory thereof,  and  any  person,  firm,  or  corporation  resident  of 
or  located  in  any  foreign  country  which  by  treaty  or  conven- 
tion affords  similar  privileges  to  citizens  of  the  United  States, 
and  who  are  entitled  to  the  exclusive  use  of  any  lawful  trade- 
mark, or  who  intend  to  adopt  and  use  any  trade-mark  for  ex- 
clusive use  within  the  United  States,  may  obtain  protection  for 
such  lawful  trade-mark  by  complying  with  the  following  re- 
quirements, to  wit : 

First.  By  causing  to  be  recorded  in  the  Patent  Office  the 
names  of  the  parties  and  their  residences  and  place  of  business, 
who  desire  the  protection  of  the  trade-mark. 

Second.  The  class  of  merchandise  and  the  particular  descrip- 
tion of  goods  comprised  in  such  class,  by  which  the  trade-mark 
has  been  or  is  intended  to  be  appropriated. 

Third.  A  description  of  the  trade-mark  itself,  with  fac  similes 
thereof,  and  the  mode  in  which  it  has  been  or  is  intended  to  be 
applied  and  used. 

Fourth.  The  length  of  time,  if  any,  during  which  the  trade- 
mark has  been  used. 

Fifth.  The  payment  of  a  fee  of  twenty-five  dollars,  in  the  same 
manner  and  for  the  same  purpose  as  the  fee  required  for  patents. 

Sixth.  The  compliance  with  such  regulations  as  may  be  pre- 
scribed by  the  Commissioner  of  Patents. 

Seventh.  The  filing  of  a  declaration,  under  the  oath  of  the 
person,  or  of  some  member  of  the  firm  or  officer  of  the  corpo- 
ration, to  the  effect  that  the  party  claiming  protection  for  the 
trade-mark  has  a  right  to  the  use  of  the  same,  and  that  no  other 
person,  firm,  or  corporation  has  the  right  to  such  use,  either  in 
the  identical  form  or  having  such  near  resemblance  thereto  as 
might  be  calculated  to  deceive,  and  that  the  description  and  fac 
similes  presented  for  record  are  true  copies  of  the  trade-mark 
sought  to  be  protected. 

Sec.  78.  And  belt  further  enacted,  That  such  trade-mark  shall 
remain  in  force  for  thirty  years  from  the  date  of  such  registra- 

18 


98 

tion,  except  in  cases  where  such  trade-mark  is  claimed  for  and 
applied  to  articles  not  manufactured  in  this  country  and  in 
which  it  receives  protection  under  the  laws  of  any  foreign 
country  for  a  shorter  period,  in  which  case  it  shall  cease  to  have 
any  force  in  this  country  by  virtue  of  this  act  at  the  same  time 
that  it  becomes  of  no  effect  elsewhere,  and  during  the  period 
that  it  remains  in  force  it  shall  entitle  the  person,  firm,  or  cor- 
poration registering  the  same  to  the  exclusive  use  thereof  so  far 
as  regards  the  dencription  of  goods  to  which  it  is  appropriated 
in  the  statement  filed  under  oath  as  aforesaid,  and  no  other 
person  shall  lawfully  use  the  same  trade-mark,  or  substantially 
the  same,  or  so  nearly  resembling  it  as  to  be  calculated  to  de- 
ceive, upon  substantially  the  same  description  of  goods :  Pro- 
vided, That  six  months  prior  to  the  expiration  of  said  term  of 
thirty  years,  application  may  be  made  for  a  renewal  of  such 
registration,  under  regulations  to  be  prescribed  by  the  Commis- 
sioner of  Patents,  and  the  fee  for  such  renewal  shall  be  the 
same  as  for  the  original  registration ;  certificate  of  such  renewal 
shall  be  issued  in  the  same  manner  as  for  the  original  registra- 
tion, and  such  trade-mark  shall  remain  in  force  for  a  further 
term  of  thirty  years :  And  provided  further,  That  nothing  in 
this  section  shall  be  construed  by  any  court  as  abridging  or  in 
any  manner  affecting  unfavorably  the  claim  of  any  person, 
firm,  corporation,  or  company  to  any  trade-mark  after  the  ex- 
piration of  the  term  for  which  such  trade-mark  was  registered. 
Sec.  79.  And  be  it  further  enacted,  That  any  person  or  cor- 
poration who  shall  reproduce,  counterfeit,  copy,  or  imitate  any 
such  recorded  trade-mark,  and  aflix  the  same  to  goods  of  sub- 
stantially the  same  descriptive  properties  and  qualities  as  those 
referred  to  in  the  registration,  shall  be  liable  to  an  action  on 
the  case  for  damages  for  such  wrongful  use  of  said  trade-mark, 
at  the  suit  of  the  owner  thereof,  in  any  court  of  competent  ju- 
risdiction in  the  United  States,  and  the  party  aggrieved  shall 
also  have  his  remedy  according  to  the  course  of  equity  to  enjoin 
the  wrongful  use  of  his  trade-mark  and  to  recover  compensa- 
tion therefor  in  any  court  having  jurisdiction  over  the  person 
guilty  of  such  wrongful  use.  The  Commissioner  of  Patents  shall 
not  receive  and  record  any  proposed  trade-mark  which  is  not 
and  cannot  become  a  lawful  trade-mark,  or  which  is  merely  the 
name  of  a  person,  firm,  or  corporation  only,  unaccompanied  by 
a  mark  suflScient  to  distinguish  it  from  the  same  name  when 


99 

used  by  other  persons,  or  which  is  identical  with  a  trade-mark 
appropriate  to  the  same  class  of  merchandise  and  belonging  to 
a  different  owner,  and  already  registered  or  received  for  regis- 
tration, or  which  so  nearly  resembles  such  last-mentioned  trade- 
mark as  to  be  likely  to  deceive  the  public:  Provided,  That  this 
section  shall  not  prevent  the  registry  of  any  lawful  trade-mark 
rightfully  used  at  the  time  of  the  passage  of  this  act. 

Sec.  80.  And  be  it  further  enacted,  That  the  time  of  the  re- 
ceipt of  any  trade-mark  at  the  Patent  OflBce  for  registration 
shall  be  noted  and  recorded,  and  copies  of  the  trade-mark  and 
of  the  date  of  the  receipt  thereof,  and  of  the  statement  filed 
therewith,  under  the  seal  of  the  Patent  Office,  certified  by  the 
Commissioner,  shall  be  evidence  in  any  suit  in  which  such 
trade-mark  shall  be  brought  in  controversy. 

Sec.  81.  And  be  it  further  enacted,  That  the  Commissioner  of 
Patents  is  authorized  to  make  rules,  regulations,  and  prescribe 
forms  for  the  transfer  of  the  right  to  the  use  of  such  trade- 
marks, conforming  as  nearly  as  practicable  to  the  requirements 
of  law  respecting  the  transfer  and  transmission  of  copyrights. 

Sec.  82.  And  be  it  further  enacted,  That  any  person  who  shall 
procure  the  registry  of  any  trade-mark,  or  of  himself  as  the 
owner  thereof,  or  an  entry  respecting  a  trade-mark  in  the  Pat- 
ent Office  under  this  act,  by  making  any  false  or  fraudulent 
representations  or  declarations,  verbally  or  in  writing,  or  by 
any  fraudulent  means,  shall  be  liable  to  pay  damages  in  conse- 
quence of  any  such  registry  or  entry  to  the  person  injured 
thereby,  to  be  recovered  in  an  action  on  the  case  before  any 
court  of  competent  jurisdiction  within  the  United  States. 

Sec.  83.  And  be  it  further  enacted,  That  nothing  in  this  act 
shall  prevent,  lessen,  impeach,  or  avoid  any  remedy  at  law  or 
in  equity,  which  any  party  aggrieved  by  any  wrongful  use  of 
any  trade-mark  might  have  had  if  this  act  had  not  been  passed. 

Sec.  84.  Ayid  be  it  further  enacted,  That  no  action  shall  be 
maintained  under  the  provisions  of  this  act  by  any  person 
claiming  the  exclusive  rig.ht  to  any  trade-mark  which  is  used 
or  claimed  in  any  unlawful  business,  or  upon  any  article  which 
is  injurious  in  itself,  or  upon  any  trade-mark  which  has  been 
fraudulently  obtained,  or  which  has  been  formed  and  used  with 
the  design  of  deceiving  the  public  in  the  purchase  or  use  of  any 
article  of  merchandise. 


100 

*  Protibioms  op  the  Act  op  Jolt  8th,  1870,  as  to 

Copyrights. 

Skc.  86.  And  be  it  further  enacted.  That  all  records  and  other 
things  relating  to  copyrights  and  required  by  law  to  be  pre- 
served, shall  be  under  the  control  of  the  Librarian  of  Congress, 
and  kept  and  preserved  in  the  Library  of  Congress  ;  and  the 
Librarian  of  Congress  shall  have  the  immediate  care  and  super- 
vision thereof,  and,  under  the  supervision  of  the  Joint  Com- 
mittee of  Congress  on  the  Library,  shall  perforin  all  acts  and 
duties  required  by  law  touching  copyrights.  The  Librarian 
shall  cause  a  seal  to  be  provided  for  said  office,  with  such  device 
as  the  Joint  Committee  on  the  Library  may  approve,  with  which 
all  records  or  papers  issued  from  said  office,  and  to  be  used  in 
evidence,  shall  be  authenticated.  He  shall  also  give  an  addi- 
tional bond,  with  sureties,  to  the  Treasurer  of  the  United  States^ 
in  the  sum  of  five  thousand  dollars,  with  the  condition  that  he 
will  render  to  the  proper  officers  of  the  treasury  a  true  account 
of  all  moneys  received  by  virtue  of  his  office.  He  shall  also 
make  an  annual  report  to  Congress  of  the  number  and  descrip- 
tion of  copyright  publications  for  which  entries  have  been  made 
during  the  year.  And  the  Librarian  of  Congress  shall  receive 
a  yearly  compensation  of  four  thousand  dollars,  to  commence 
when  this  act  shall  take  effisct. 

Sec.  86.  And  be  it  further  enacted,  That  any  citizen  of  the 
United  States,  or  resident  therein,  who  shall  be  the  author,  in- 
ventor, designer,  or  proprietor  of  any  book,  map,  chart,  dra- 
matic or  musical  composition,  engraving,  cut,  print,  or  photo- 
graph or  negative  thereof,  or  of  a  painting,  drawing,  chromo, 
statue,  statuary,  and  of  models  or  designs  intended  to  be  per- 
fected as  works  of  the  fine  arts,  and  his  executors,  administra- 
tors, or  assigns,  shall,  upon  complying  with  the  provisions  of 
this  act,  have  the  sole  liberty  of  printing,  reprinting,  publish- 
ing, completing,  copying,  executing,  finishing,  and  vending 
the  same ;  and  in  the  case  of  a  dramatic  composition,  of  pub- 
licly performing  or  representing  it,  or  causing  it  to  be  performed 
or  represented  by  others;  and  authors  may  reserve  the  right  to 
dramatize  or  to  translate  their  own  works. 

Skc.  87.  And  be  it  further  enacted,  That  copyrights  shall  be 


101 

granted  for  the  term  of  twenty-eight  years  from  the  time  of 
recording  the  title  thereof,  in  the  manner  hereinafter  directed. 

Sec.  88.  And  he  it  further  enacted,  That  the  author,  inventor, 
or  designer,  if  he  be  still  living  and  a  citizen  of  the  United 
States  or  resident  therein,  or  his  widow  or  children,  if  he  be 
dead,  shall  have  the  same  exclusive  right  continued  for  the 
further  term  of  fourteen  years,  upon  recording  the  title  of  the 
work  or  description  of  the  article  so  secured  a  second  time,  and 
comph'ing  witli  all  other  regulations  in  regard  to  original  copy- 
rights, within  six  months  before  the  expiration  of  the  first  term. 
And  such  person  shall,  within  two  months  from  the  date  of  said 
renewal,  cause  a  copy  of  the  record  thereof  to  be  published  in 
one  or  more  newspapers,  printed  in  the  United  States,  for  the 
space  of  four  weeks. 

Sec.  89.  And  be  it  further  enacted,  That  copyrights  shall  be 
assignable  in  law,  by  any  instrument  of  writing,  and  such  as- 
signment shall  be  recorded  in  the  oflSce  of  the  Librarian  of  Con- 
gress within  sixty  days  after  its  execution,  in  default  of  which 
it  shall  bo  void  as  against  any  subsequent  purchaser  or  mort- 
gagee for  a  valuable  consideration,  without  notice. 

Sec.  90.  And  he  it  further  enacted,  That  no  person  shall  be 
entitled  to  a  copyright  unless  he  shall,  before  publication,  de- 
posit in  the  mail  a  printed  copy  of  the  title  of  the  book  or  other 
article,  or  a  description  of  the  painting,  drawing,  chromo, 
statue,  statuary,  or  model  or  design  for  a  work  of  the  fine  arts, 
for  which  he  desires  a  copyright,  addressed  to  the  Librarian  of 
Congress,  and,  within  ten  days  from  the  publication  thereof, 
deposit  in  the  mail  two  copies  of  such  copyright  book  or  other 
article,  or  in  case  of  a  painting,  drawing,  statue,  statuary, 
model  or  design  for  a  work  of  the  fine  arts,  a  photograph  of  the 
same,  to  be  addressed  to  sai(^  Librarian  of  Congress,  as  herein- 
after to  be  provided.. 

Sec.  91.  And  he  it  further  enacted,  That  the  Librarian  of  Con- 
gress shall  record  the  name  of  such  copyright  book  or  other 
article,  forthwith  in  a  book  to  be  kept  for  that  purpose,  in  the 
words  following:  "  Library  of  Congress,  to  wit:  Be  it  remem- 
bered that  on  the day  of ,  Anno  Domini , 

A.  B.,  of ,  hath  deposited  in  this  office  the  title  of  a  book 

(map.  chart,  or  otherwise,  as  the  case  may  be,  or  description  of 


102 

the  article),  the  title  or  description  of  which  is  in  the  following 
words,  to  wit:  (here  insert  the  title  or  description),  the  right 
whereof  he  claims  as  author,  originator  (or  proprietor,  as  the 
case  may  he),  in  conformity  with  the  laws  of  the  United  States 
respecting  copyrights.  C.  D.,  Librarian  of  Congress."  And 
he  shall  give  a  copy  of  the  title  or  description,  under  the  seal 
of  the  Librarian  of  Congress,  to  said  proprietor,  whenever  he 
shall  require  it. 

Sec.  92.  And  be  it  further  enacted,  That  for  recording  the  title 
or  description  of  any  copyright  book  or  other  article,  the  Li- 
brarian of  Congress  shall  receive,  from  the  person  claiming  the 
same,  fifty  cents  ;  and  for  every  copy  under  seal  actually  given 
to  such  person  or  his  assigns,  fifty  cents  ;  and  for  recording  any 
instrument  of  writing  for  the  assignment  of  a  copyright,  fifteen 
cents  for  every  one  hundred  words  ;  and  for  every  copy  thereof, 
ten  cents  for  every  one  hundred  words,  which  moneys,  so  re- 
ceived, shall  be  paid  into  the  Treasury  of  the  United  States. 

Sec.  93.  And  be  it  further  enacted,  That  the  proprietor  of 
every  copyright  book  or  other  article  shall  mail  to  the  Librarian 
of  Congress  at  Washington,  within  ten  days  after  its  publication, 
two  complete  printed  copies  thereof,  of  the  best  edition  issued, 
or  description  or  photograph  of  such  article  as  hereinbefore  re- 
quired, and  a  copy  of  every  subsequent  edition  wherein  any  sub- 
stantial changes  shall  be  made. 

Seo.  94.  And  be  it  further  enacted,  That  in  default  of  such  de- 
posit in  the  post-office,  said  proprietor  shall  be  liable  to  a  penalty 
of  twenty-five  dollars,  to  be  collected  by  the  Librarian  of  Con- 
gress, in  the  name  of  the  United  States,  in  an  action  of  debt  in 
any  District  Court  of  the  United  States,  within  the  jurisdiction 
of  which  the  delinquent  may  reside  or  be  found. 

Sec.  95.  And  be  it  further  enacted,  That  any  such  copyright 
book  or  other  article  may  be  sent  to  the  Librarian  of  Congress 
by  mail,  free  of  postage,  provided  the  words  "  Copyright  Mat- 
ter "  are  plainly  written  or  printed  on  the  outside  of  the  package 
containing  the  same. 

Sec.  96.  And  be  it  further  enacted.  That  the  postmaster  to 
whom  such  copyright  book,  title,  or  other  article  is  delivered, 
shall,  if  requested,  give  a  receipt  therefor  ;  and  when  so  deliv- 


103 

ered  he  shall  mail  it  to  its  destination  without  cost  to  the  pro- 
prietor. 

Sec.  97.  And  be  it  further  enacted,  That  no  person  shall  main- 
tain an  action  for  the  infringement  of  his  copyright  unless  he 
shall  give  notice  thereof  by  inserting  in  the  several  copies  of 
every  edition  published,  on  the  title-page  or  the  page  immedi- 
ately following,  if  it  be  a  book  ;  or  if  a  map,  chart,  musical  com- 
position, print,  cut,  engraving,  photograph,  painting,  drawing, 
chromo,  statue,  statuary,  or  model  or  design  intended  to  be  per- 
fected and  completed  as  a  work  of  the  fine  arts,  by  inscribing 
upon  some  portion  of  the  face  or  front  thereof,  or  on  the  face  of 
the  substance  on  which  the  same  shall  be  mounted,  the  follow- 
ing words,  viz. :  "Entered  according  to  act  of  Congress,  in  the 

year ,  by  A.  B.,  in  the  office  of  the  Librarian  of  Congress, 

at  Washington." 

Sec.  98.  And  be  it  further  enacted,  That  if  any  person  shall 
insert  or  impress  such  notice,  or  words  of  the  same  purport,  in 
or  upon  any  book,  map,  chart,  musical  composition,  print,  cut, 
engraving,  or  photograph,  or  other  articles  herein  named,  for 
which  he  has  not  obtained  a  copyright,  every  person  so  offend- 
ing shall  forfeit  and  pay  one  hundred  dollars ;  one  mOiety  thereof 
to  the  person  who  shall  sue  for  the  same,  and  the  other  to  the 
use  of  the  United  States,  to  be  recovered  by  action  in  any  court 
of  competent  jurisdiction. 

Sec.  99.  And  be  it  further  enacted,  That  if  any  person,  after 
the  recording  of  the  title  of  any  book  as  herein  provided,  shall 
within  the  term  limited,  and  without  the  consent  of  the  pro- 
prietor of  the  copyright  first  obtained  in  writing,  signed  in 
presence  of  two  or  more  witnesses,  print,  publish,  or  import,  or, 
knowing  the  same  to  be  so  printed,  published,  or  imported,  shall 
sell  or  expose  to  sale  any  copy  of  such  book,  such  offender  shall 
forfeit  every  copy  thereof  to  said  proprietor,  and  shall  also  for- 
feit and  pay  such  damages  as  may  be  recovered  in  a  civil  action 
by  such  proprietor  in  any  court  of  competent  jurisdiction. 

Sec.  100.  And  be  it  further  enacted,  That  if  any  person,  after 
the  recording  of  the  title  of  any  map,  chart,  musical  composi- 
tion, print,  cut,  engraving,  or  photograph,  or  chromo,  or  of  the 
description  of  any  painting,  drawing,  statue,  statuary,  or  model 
or  design  intended  to  be  perfected  and  executed  as  a  work  of 


104 

the  fine  arts,  as  herein  provided,  shall,  within  the  term  limited, 
and  without  the  consent  of  the  proprietor  of  the  copyright  first 
obtained  in  writing,  signed  in  presence  of  two  or  more  witnesses, 
engrave,  etch,  work,  copy,  print,  publish,  or  import,  either  in 
whole  or  in  part,  or  by  varying  the  main  design  with  intent  to 
evade  the  law,  or,  knowing  the  same  to  be  so  printed,  published, 
or  imported,  shall  sell  or  expose  to  sale  any  copy  of  such  map 
or  other  article,  as  aforesaid,  he  shall  forfeit  to  the  said  pro- 
prietor all  the  plates  on  which  the  same  shall  be  copied,  and 
every  sheet  thereof,  either  copied  or  printed,  and  shall  further 
forfeit  one  dollar  for  every  sheet  of  the  same  found  in  his  pos- 
session, either  printing,  printed,  copied,  published,  imported, 
or  exposed  for  sale ;  and  in  case  of  a  painting,  statue,  or  statu- 
ary, he  shall  forfeit  ten  dollars  for  every  copy  of  the  same  in 
his  possession,  or  which  have  by  him  been  sold  or  exposed  for 
sale;  one  moiety  thereof  to  the  proprietor,  and  the  other  to  the 
use  of  the  United  States,  to  be  recovered  by  action  in  any  court 
of  competent  jurisdiction. 

SeCT  101.  And  be  it  further  enacted,  That  any  person  publicly 
performing  or  representing  any  dramatic  composition  for  which 
a  copyright  lias  been  obtained,  without  the  consent  of  the  pro- 
prietor thereof,  or  his  heirs  or  assigns,  shall  be  liable  for  dam- 
ages therefor,  to  be  recovered  by  action  in  any  court  of  compe- 
tent jurisdiction  ;  said  damages  in  all  cases  to  be  assessed  at  such 
sum,  not  less  than  one  hundred  dollars  for  the  first,  and  fifty 
dollars  for  every  subsequent  performance,  as  to  the  court  shall 
appear  to  be  just. 

Sec.  102.  And  be  it  further  enacted,  That  any  person  who  shall 
print  or  publish  any  manuscript  whatever,  without  the  consent 
of  the  author  or  proprietor  first  obtained  (if  such  author  or  pro- 
prietor be  a  citizen  of  the  United  States,  or  resident  therein), 
shall  be  liable  to  said  author  or  proprietor  for  all  damages  oc- 
casioned by  such  injury,  to  be  recovered  by  action  on  the  case 
in  any  court  of  competent  jurisdiction. 

Sec.  103.  And  be  it  further  enacted.  That  nothing  herein  con- 
tained shall  be  construed  to  prohibit  the  printing,  publishing, 
importation,  or  sale  of  any  book,  map,  chart,  dramatic  or  musi- 
cal composition,  print,  cut,  engraving,  or  photograph,  written, 
composed,  or  made  by  any  person  not  a  citizen  of  the  United 
States,  nor  resident  therein. 


105 

Sec.  104.  And  he  it  further  enacted.  That  no  action  shall  be 
maintained  in  &ny  case  of  forfeiture  or  penalty  under  the  copy- 
right laws,  unless  the  same  is  commenced  within  two  years  after 
the  cause  of  action  has  arisen. 

Sec.  105.  And  be  it  further  enacted.  That  in  all  actions  arising 
under  the  laws  respecting  copyrights  the  defendant  may  plead 
the  general  issue,  and  give  the  special  matter  in  evidence. 

Sec.  106.  And  he  it  further  enacted,  That  all  actions,  suits, 
controversies,  and  cases  arising  under  the  copyright  laws  of  the 
United  States  shall  be  originally  cognizable,  as  well  in  equity 
as  at  law,  whether  civil  or  penal  in  their  nature,  by  the  Circuit 
Courts  of  the  United  States,  or  any  District  Court  having  the 
jurisdiction  of  a  Circuit  Court,  or  in  the  Supreme  Court  of  the 
District  of  Columbia,  or  any  Territory.  And  the  court  shall 
have  power,  upon  bill  in  equity,  filed  by  any  party  aggrieved, 
to  grant  injunctions  to  prevent  the  violation  of  any  right  secured 
by  said  laws,  according  to  the  course  and  p/inciples  of  courts  of 
equity,  on  such  terms  as  tl  e  court  aiay  deem  reasonable. 

Sec.  107.  And  be  it  further  enacted,  That  a  writ  of  error  or  ap- 
peal to  the  Supreme  Court  of  the  United  States  shall  lie  from  all 
judgments  and  decrees  of  any  court,  in  any  action,  suit,  contro- 
versy, or  case  touching  copyrights,  in  the  same  manner  and  under 
the  same  circumstances  as  in  other  judgments  and  decrees  of 
such  courts,  without  regard  to  the  sum  or  value  in  controversy. 

Sec.  108.  And  be  it  further  enacted,  That  in  all  recoveries 
under  the  copyright  laws,  either  for  damages,  forfeitures,  or 
penalties,  full  costs  shull  be  allowed  thereon. 

Sec.  109.  And  be  it  further  enacted,  That  all  books,  maps, 
charts,  and  other  publications  of  every  nature  whatever,  here- 
tofore deposited  in  the  Department  of  the  Interior,  according 
to  the  laws  regulating  copyrights,  together  with  all  the  records 
of  said  department,  and  all  records  concerning  the  same  which 
were  removed  by  the  Department  of  the  Interior  from  the  De- 
partment of  State,  shall  be  removed  to,  and  be  under  the  con- 
trol of  the  Librarian  of  Congress,  who  is  hereby  charged  with 
all  the  duties  pertaining  to  copyrights  required  by  law. 

Sec.  110.  And  be  it  further  enacted,  That  the  Clerk  of  each  of 
the  District  Courts  of  the  United  States,  shall  transmitforthwith 

14 


106 

to  tho  Librarian  of  Congress,  all  books,  maps,  prints,  photo- 
graphs, music,  and  other  publications  of  every  nature  what- 
ever, deposited  in  tho  said  clerk's  office,  and  not  heretofore  sent 
to  the  Department  of  the  Interior,  at  Washington,  together 
with  all  records  of  copyright  in  his  possession,  including  the 
titles  so  recorded,  and  the  dates  of  record  :  Provided,  That  where 
there  are  duplicate  copies  of  legal,  scientific,  or  mechanical 
works,  one  copy  of  each  may  be  deposited  in  the  library  of  the 
Patent  Office,  for  which  a  receipt  shall  be  given  by  the  Com- 
missioner of  Patents  to  the  Librarian  of  Congress. 


107 


Eepealinq  Clause  and  Schedule. 

Sec.  111.  And  be  it  further  enacted,  That  the  acts  and  parts  of 
acts  set  forth  in  the  schedule  of  acts  cited,  hereto  annexed,  are 
hereby  repealed,  without  reviving  any  acts  or  parts  of  acts  re- 
pealed by  any  of  said  acts,  or  by  any  clause  or  provisions  therein : 
Provided,  however,  That  the  repeal  hereby  enacted  shall  not  af- 
fect, impair,  or  take  away  any  right  existing  under  any  of  said 
laws ;  but  all  actions  and  causes  of  action,  both  in  law  and  in 
equity,  which  have  arisen  under  any  of  said  laws,  may  be  com- 
menced and  prosecuted  and  if  already  commenced  may  be  prose- 
cuted, to  final  judgment  and  execution,  In  the  same  manner  as 
though  this  act  had  not  been  passed,  excepting  that  the  remedial 
provisions  of  this  act  shall  be  applicable  to  all  suits  and  proceed- 
ings hereafter  commenced ;  And  provided  also.  That  all  applica- 
tions for  patents  pending  at  the  time  of  the  passage  of  this  act, 
in  cases  where  the  duty  has  been  paid,  shall  be  proceeded  with 
and  acted  on  in  the  same  manner  as  though  filed  after  the  pas- 
sage thereof:  And  provided  further,  That  all  ofi"ences  which  aro 
defined  and  punishable  under  any  of  said  acts,  and  all  penalties 
and  forfeitures  created  thereby,  and  incurred  before  this  act 
takes  eflfect,  may  be  prosecuted,  sued  for,  and  recovered,  and 
such  oflences  punished  according  to  the  provisions  of  said  acts, 
which  are  continued  in  force  for  such  purpose. 


Schedule  of  statutes  cited  and  repealed,  as  printed  in  the  Statutes 
at  Large,  including  such  portions  only  of  the  appropriation 
Mils  refeTred  to  as  are  applicable  to  the  Patent  Office. 

Patents. 

Act  of  July  4th,  1836,  chap.  357,  vol.  .5,  p.  117. 
March  3d,  1837,  chap.  4o,  vol.  5,  p.  191. 
March  3d,  1839,  chap.  88,  vM.  5,  p.  353. 
August  29th,  1842,  chap.  2G3,  vol.  5,  p.  543. 
August  6th,  1846,  chap.  90,  vol.  9,  p.  59. 
May  27th,  1848,  chap.  47,  vol.  9,  p.  231. 
March  3d,  1849,  chap.  1C8,  vol.  9,  p.  395. 
March  3d,  1851,  chap.  32,  vol.  9,  p.  617. 


108 

Act  of  August  80th,  1852,  chap.  107,  vol.  10,  p.  75. 
August  81st,  1852,  chap.  108,  vol.  10,  p.  76. 
March  8d,  1858,  chap.  97,  vol.  10,  p.  209. 
April  22d,  1854,  chap.  62,  vol.  10,  p.  276. 
March  8d,  1855,  chap,  175,  vol.  10,  p.  643. 
August  18th,  1856,  chap.  129,  vol.  11,  p.  81. 
March  3d,  1859,  chap.  80,  vol.  11,  p.  410. 
February  18th,  18G1,  chap.  37,  vol.  12,  p.  180. 
March  2d,  18^1,  chap.  88,  vol.  12,  p.  246. 
March  3d,  1863,  chap.  102,  vol.  12,  p.  796. 
June  25th,  1864,  chap.  159,  vol.  18,  p.  194. 
March  3d,  1865,  chap.  112,  vol.  13,  p.  588. 
June  27th,  1866,  chap.  143,  vol.  14,  p.  76. 
March  29th,  1807,  chap.  17,  vol.  15,  p.  10. 
July  20th,  1868,  chap.  177,  vol.  15,  p.  119. 
July  23d,  1868,  chap.  227,  vol.  15,  p.  168. 
March  3d,  1869,  chap.  121,  vol.  15,  p.  298 

COPTEIGHTS. 

Act  of  February  15th,  1819,  chap.  19,  vol.  3,  p.  481. 
February  8d,  1831,  chap.  16,  vol.  4,  p.  436. 
June  80th,  1834,  chap.  157,  vol.  4,  p.  728. 
August  18th,  1856,  chap.  169,  vol.  11,  p.  188. 
February  5th,  1859,  chap.  22,  vol.  11,  p.  380. 
February  18th,  1861,  chap.  87,  vol.  12,  p.  180. 
March  3d,  1865,  chap.  126,  vol.  13,  p.  540, 
February  18th,  1867,  chap.  43,  vol.  14,  p.  895. 

Approved  July  8th,  1870. 

Note. — The  following  is  the  text  of  the  supplemental  act  re- 
lating to  patents,  approved  March  3,  1871 : 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of  the 
United  States  of  America^  in  Congress  assembled,  That  that  part 
of  section  thirty-three  of  an  act  entitled  "  An  act  to  revise,  con- 
solidate, and  amend  the  statutes  relating  to  patents  and  copy- 
rights," approved  July  eight,  eighteen  hundred  and  seventy, 
which  requires  that,  in  case  of  application  by  assignee  or  as- 
signees for  reissue  of  letters-patent,  the  application  shall  be  made 
and  the  specification  sworn  to  by  the  inventor  or  discoverer,  if 
living,  shall  not  be  construed  to  apply  to  patents  issued  and  as- 
signed prior  to  July  eight,  eighteen  hundred  and  seventy. 

Approved,  March  3,  1871. 


109 


INDEX 


TO  PATENT,  TRADE  MARK,  AND  COPYRIGHT 
LAWS. 


Abandonment,  by  incomplete  application,  for  two  years. 
Additional  clerks,  &c.,  .... 

Application,  how  made,       .... 

in  case  of  forfeited  patents,  . 

rejected  or  withdrawn,  .... 

to  be  completed  in  two  years, 

made  by  inventor  in  case  of  assignment, 

by  executor  or  administrator. 
Appeal  to  board  of  examiners-in-cbief, 

to  Commissioner,  ..... 

to  Supreme  Court  of  District  of  Columbia, 

mode  of  proceeding,      .... 

to  Supreme  Court  of  United  States, 
Assignees,  patents  or  reissues  to. 
Assignments,         ...... 

must  be  recorded  within  three  months. 
Assistant  Commissioner  how  appointed, 

salary,  ....... 

to  act  in  absence  of  Commissioner, 
Bill  in  equity,      ...... 

Bond,  Commissioner  and  chief  clerk,   . 
Caveat,  who  may  file,  ..... 

certified  copies  of  records  to  be  evidence. 
Circuit  Courts  to  take  cognizance  of  cases  under  patent 
Clerks,  .... 

Copyists,      .... 
Commissioner,  how  appointed 

salary,  .... 

duties, 

to  give  bond, 

franking  privilege, 

report  to  Congress, 

to  make  rules  and  regulations, 

to  establish  rules  for  taking  testimony, 

appeal  to,      .....         . 

to  make  rules,  &c.,  regulating  transfer  of  trade-marks 


laws, 


SKOTIOir 

32 

3 

26-30 

35 

35 

32 

33 

34 

46 

47 

48 

49,  50,  51 

56 

33 

36 

36 

2 

4 

11 

52 

« 

40 

57 

55 

2,4 

4 

2 

4 

7 

6 

8 

9 

19 

43 

47 

81 


110 


BECTIOW 

Cgpyright, 85-110 

Librarian  of  Congress  to  have  charge  of,       .         .         .  85 

who  may  obtain,  and  for  what,     .....  86 

duration,       .........  87 

extension,      .........  88 

assignment,  .........  89 

requisites  for  obtaining,         ......  90 

two  copies  to  be  sent  to  Librarian  of  Congress,     .         .  90,  93 

form  of  record  and  certificate 91 

fees  for  recording,  Ac,          ......  92 

copies  of  new  editions  to  be  sent,          ....  93 

penalty  for  failure  to  deposit,        .....  9i 

copyright  matter  free  of  postage,          ....  96 

postmaster  to  give  receipt,    ......  96 

form  to  be  entered  in  or  on  copyright  book,  Ac. ,  .         .  97 
penalty  for  wrongly  announcing  that  copyright  has 

been  obtained,  ........  98 

remedy  for  infringement,      ......  99 

penalty   for    substantial   infringement    of   maps,    de 

signs,  &o.,          .         .         -,....  100 

performance  of  dramatic  compositions,         ...  101 

publishing  manuscript  without  consent,         .         .         .  102 

not  applicable  to  foreigners  or  non-residents,        .         .  103 

no  action  maintained  unless  within  two  years,      .         ,  104 

plea,      ..........  105 

Circuit  Courts  to  take  cognizance,        ....  106 

appeal  to  Supreme  Court,     ......  107 

costs  in  suits,        ........  108 

transfer  to  Librarian  of  Congress,         ....  109 

clerks  to  send  matter  now  in  hand  to  Libraf  ian  of  Con- 
gress,           110 

repealing  clause,   .         .         .         .         .         .         .         .  Ill 

Designs 71-76 

when  models  may  be  dispensed  with,    ....  72 

daration, 73 

extension,     .........  74 

fees, 75 

Disbursements  made  by  disbursing  clerk  of  Interior  Depart- 
ment,         69 

Disclaimer, 64 

to  be  made  before  suit,          ......  60 

Drawings  in  applications,    .......  27 

Examination, 31 


Ill 


8BCT10S 

Examiner  in  charge  of  interferences,  .....  2 

salary,  ..........  4 

duty, 42 

Examiners,  principal, ........  2 

salary,  ..........  4 

first  assistant,        ........  2,  4 

second  assistant,  ........  2,  4 

Examiners-in-chief,  how  appointed,     .....  2 

salary,           .........  4 

duties, 10 

appeal  to,      ........         .  46 

Extension, 63-67 

Fees 68 

how  paid,      .........  69 

Final  fee — if  not  paid  within  six  months,  patent  withheld,  23 

Foreign  patent — effect  on  application  in  the  United  States,  25 

to  give  date  to  American  patent,  .....  25 

Franking  privilege,       ........  7 

Infringement,       ...                   .....  55 

damages  for,          ........  59 

plea  and  special  matters  to  be  proved,  ....  61 

Injunction, 55 

Interferences,       .........  42 

Interfering  applications, 42 

Patents,        ..........  58 

Laborers  and  watchmen 4 

Librarian, 2,  4 

Library, 15 

Machinist,   ..........  2,  4 

Messenger  and  purchasing  clerk,          .....  2,  4 

Models  to  be  arranged  and  open  to  inspection,    ...  13 

in  applications,      ........  29 

of  rejected  applications  may  be  disposed  of,          .         .  14 

of  designs,     .........  72 

Money  received  paid  into  treasury,      .....  69 

to  be  paid  back,    ........  70 

Oath  by  administrator  or  executor  applying,       ...  34 

of  applicant,  before  whom  to  be  taken,          ...  30 

of  office 5 

Officers'  and  employees'  oath,       ......  5 

not  to  acquire  interest  in  patents,          ....  16 

Papers  filed,  when  they  may  be  printed,      ....  18 


112 


Patent  0£5ce 

officers, *      .         .    _    . 

agents  not  recognized  for  misconduct,  .         .         .         . 
Patents,  date  of,  ...•••■.         . 

for  what  granted,  ....... 

withheld  if  final  fee  is  not  paid  within  six  months, 

what  must  contain,       ....... 

how  to  be  signed  and  recorded,     .         .         .        .         . 

foreign,         ......... 

forfeited  application  for  renewal  of,       . 
"  Patented "  to  be  marked  on  articles,        .         .         ,         . 

erroneously  marked,      ....... 

Plea  and  special  matters  to  be  proved  in  suit  for  infringe- 
ment,       .......... 

Printing  specifications,  claims,  decisions,  Ac,     . 

of  illegible  papers, 

Re-examination  of  a  rejected  case,        .         .         .         .         . 

Reissue,       .......... 

Rejected  and  withdrawn  applications,  renewal  of, 

Repealing  clause, 

Report  to  Congress, 

Rules  and  regulations,  ....... 

for  taking  testimony.  Commissioner  to  establish, 

Salaries, 

Seal, 


Specimens  in  applications, 

Subpoena  issued  by  clerks  of  United  States  courts, 
Sup.  Ct.  of  Dist.  of  Col. ,  appeal  to  and  mode  of  proceeding. 
Supreme  Court  of  United  States,  writ  of  error  or  appeal  to 
Trade-marks, 

who  may  obtain  protection  for,  and  how, 

duration,  extent  of  protection,  and  extension, 

remedy  for  infringement,      .         . 

not  a  name  alone,  ...... 

what  may  be  refused,  ...... 

certified  copy  of  mark  and  record  to  be  evidence. 

Commissioner  to  make  rules  and  regulate  transfer, 

fraud  in  procuring  registry,  .... 

act  not  to  affect  existing  remedy, 

no  action  to  be  maintained  for  fraudulent  or  improper 
Use  in  a  foreign  country  if  not  patented  or  published, 

of  patentable  article  before  patent, 
Witnesses  in  ofises  pending  in  Patent  Office, 


sicTioy 
1 
2 
17 
23 
24 
23 
22 
21 
25 
35 
38 
39 

61 

20 

18 

41 

53 

35 

111 

9 

19 

43 

4 

12 

28 

44 

48-51 
56 

77-84 
77 
78 
79 
79 
79 
80 
81 
82 
83 
84 
62 
37 
45 


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